Should A Run Inward Blue Planet Domain Travel Able To Larn A Trademark?

Here is the latest post service from our Intern Tibbie McIntyre.

Gustav Vigeland was an eminent Norwegian sculptor whose most notable plant include the Vigeland installation, a staggering organization of 2 hundred together with twelve granite together with bronze statutes roofing lxxx acres inwards Oslo’s Frogner Park, together with the pattern of the Nobel Peace Prize medal.

A peculiarly unique deal was struck betwixt Vigeland together with the Municipality of Oslo (Oslo commune, “the Municipality”) inwards 1921, stating that Vigeland would bequeath the copyright contained inside his life’s piece of occupation to the urban nub inwards homecoming for the utilisation for the residual of Vigeland’s lifetime of a purpose built theater together with studio.

‘Monolitten’ (The Monolith)

Photo Credit: Nickrds09, available here. 

It is Vigeland’s piece of occupation which is forthwith at the centre of a illustration earlier the European Free Trade Association (“EFTA”) Court (E-05/16), which at a previous phase inwards proceedings, has been reported on over at the IPKat here.

With copyright protection for Vigeland’s piece of occupation coming to an terminate inwards 2014, the Municipality applied for merchandise grade protection inwards relation to over 1 hundred of his pieces, including ‘‘Monolitten’ (The Monolith) (pictured above) together with Sinnataggen’ (The Angry Boy) (pictured below).

The displace could hold upwards considered past times some every bit an endeavour to extend legal protection for Vigeland’s piece of occupation beyond the usual life of copyright, usurping the policy objectives behind copyright legislation alongside merchandise grade law. It could hold upwards considered past times others every bit an shrewd commercial displace past times the Municipality (which has invested considerable coin together with elbow grease inwards the advertisement together with curation of these treasured cultural artefacts) inwards monastic enjoin that it mightiness hold some command over its investment. In whatever event, the Municipality appears to hold upwards attempting to layer diverse dissimilar forms of IP rights inwards monastic enjoin to extend the originally bestowed copyright protection for the plant of Gustav Vigeland. 

‘Sinnataggen’ (The Angry Boy) at Frogner Park, Oslo

Photo Credit: Hiytel under a CC BY-NC-SA 2.0 licence.

The mass of the merchandise grade applications submitted past times the municipality for merchandise grade protection receive got been pose on hold, together with a pose out of the applications were refused past times the Norwegian Industrial Property Office (“NIPO”), on the footing of:

-          Section xiv starting fourth dimension paragraph of the Trade Marks Act, alongside NIPO finding a lack of distinctive grapheme inwards relation to the applications refused,

-          Section xiv minute paragraph (a) of the Trade Marks Act on the prohibition of purely descriptive marks (i.e. the prohibition on marks that entirely signal the kind, quality, quantity, intended purpose, value or geographical rootage of the goods or services, the fourth dimension of production of the goods or of the rendering of the services or other characteristics of the goods or services)

-          Section 2 minute paragraph 3rd choice of the Trade Marks Act on merchandise marks, where a correct may non hold upwards acquired for signs that consist entirely of a shape that results from the nature of the goods themselves, is necessary to obtain a technical upshot or adds substantial value to the goods.

The Municipality appealed NIPO’s determination to the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter; “The Board of Appeal”), which inwards plow considered whether the merchandise grade applications should hold upwards refused on additional grounds. The Board of Appeal consequently requested an Advisory Opinion for the illustration from the EFTA Court.

In The Report for the Hearing, the additional grounds the Board of Appeal considered mightiness hold upwards the footing for refusal are cited every bit Section fifteen starting fourth dimension paragraph (a) of the Trade Marks Act (designed to implement Article 3(1)(f) of Directive 2008/95/EC), which details the absolute Earth of refusal to register a merchandise mark, where the grade is constitute to hold upwards contrary to populace policy or to accepted principles of morality.

The Board of Appeal every bit good referred to the Mona Lisa illustration (Case 24 due west (pat) 188/96, GRUR 1998, p. 1021 of the High German Federal Patent Court), inwards which at that topographic point was an endeavour to register the Mona Lisa every bit a merchandise mark. In that case, the application was refused because of a lack of distinctiveness; the Da Vinci epitome is oft used past times 3rd parties, together with would non serve to pick out the rootage of whatever specified goods or services. The Board of Appeal questions whether that determination should laid upwards precedent inwards European law, together with whether merchandise grade applications of well-known plant tin grade the sack only hold upwards refused on grounds of lack of distinctiveness.  If this is the case, is at that topographic point the possibility where distinctiveness tin grade the sack hold upwards achieved through utilisation – thence qualifying the piece of occupation for registration at a afterward stage?

This same dot is eloquently expressed past times The European Copyright Society’s (“ECS”) cogent response; “The determination of the High German Federal Patent Court thus raises the possibility that the obstruction to registration may hold upwards overcome through intensive utilisation of the sign inwards production marketing together with advertising.” (Page vii of the ECS response)

The Board of Appeal every bit good references the Opinion of Advocate General Ruiz-Járabo Colomer inwards Shield Mark. Shield Mark may hold upwards relevant every bit the Advocate General states at paragraph 52;

“I detect it to a greater extent than hard to receive got … that a creation of the mind, which forms share of the universal cultural heritage, should hold upwards appropriated indefinitely past times a individual to hold upwards used on the marketplace position inwards monastic enjoin to distinguish the goods he produces or the services he provides alongside an exclusivity which non fifty-fifty its author’s estate enjoys.”

Parallels tin grade the sack clearly hold upwards drawn inwards this illustration from the Advocate General’s words quoted above, together with to grant merchandise grade protection for Vigeland’s piece of occupation would most definitely grant the Municipality an exclusivity the creator’s estate never enjoyed.

The amount laid upwards of questions referred to the EFTA courtroom tin grade the sack hold upwards constitute here, every bit good every bit The Report for the Hearing, which includes written observations from the Municipality, the Norwegian Government, the EFTA Surveillance Authority, the European Commission together with the German, Czech together with Great Britain Governments.

ECS’s response deals alongside the layering of IP rights together with specifies that – inwards some cases – the cumulation of diverse forms of IP tin grade the sack potentially undermine policy objectives. This tin grade the sack Pb to ‘dysfunctional cumulation’, which may “distort contest or may Pb to a province of affairs inwards which protection inwards 1 expanse of intellectual belongings constabulary undermines the rationales together with objectives of protection inwards another” (ECS opinion, page 2).

This author would most definitely welcome comments from interested parties on this case, whether the consensus is that the Municipality are usurping copyright policy objectives or whether the determination to apply for merchandise grade protection is an shrewd commercial move. Keep watching the 1709 weblog for updates on this case.