What role for freedom of expression under EU trade mark law? An “IKEA-PLAN” prompts a CJEU referral

Under EU trade mark law, there is no express freedom of expression-based defence.

But can third-party freedom of expression be safeguarded through the way in which the infringement test, notably the test for trade marks with a reputation and the notion of "due cause" (Article 9(2)(c) EUTMR; Article 10(6) and (2)(c) EUTMD), is construed?

Freedom of expression is a fundamental right guaranteed under both Article 10 ECHR and Article 11 of the EU Charter. In its case law, the Court of Justice of the European Union (CJEU) has also clarified that the latter has "the same meaning and scope" of Article 10 ECHR, thus also stressing the relevance of related ECtHR case law (most recently, see Opinion of AG Collins in RTL Nederland, para 49).

This, in essence, is what the CJEU has just been asked to advise on in IKEA, C-298/23, a referral for a preliminary ruling from Belgium. The Dutch Enterprise Court, Brussels has asked to CJEU to clarify if the notion of "due cause" can play such a role in safeguarding freedom of expression and, if so, what the criteria to consider are.

Background

This referral came to be in the context of proceedings brought by Swedish furniture giant IKEA over the unauthorized use of its famous blue-and-yellow logo in the campaign of a political party (incidentally: the same political party that had given rise to the litigation resulting in the CJEU referral in Deckmyn, on which see IPKat here), whose message is in essence that an “IKEA-PLAN” (where “IKEA” would stand for “Immigratie Kan Echt Anders”) could serve as inspiration for a reform of asylum and migration policy in Belgium. The plan itself is presented as an IKEA construction manual accompanied by 15 specific proposals.

IKEA's famous logo ...

... and the alleged trade mark infringement

IKEA (the company) sued for trade mark infringement, but the political party argues that it has due cause to use the trade mark.

The referring court notes that:

• In Deckmyn, the CJEU gave a broad definition of parody under EU copyright law: the notion also encompasses parody ‘with’ a work, not merely parody ‘of’ a work.
• In the most recent trade mark package, reference is made in the preambles to both the EUTMR and the EUTMD to the need to respect third-party freedom of expression, but no further guidance is given.
• In the Belgian Damn Pérignon judgment [IPKat here], little clarity was provided in this sense, as the case concerned specifically artistic expression, not political expression (as it is instead at issue in the IKEA case).

Comment

This IKEA referral seems truly one to watch. It promises to be an important case for the CJEU to tackle.

The interplay between trade mark protection and freedom of expression is not new: only a few days ago, Marcel reported on the British Hairways German case.

Earlier this year, the Italian Supreme Court also intervened on the place of freedom of expression in trade mark law, holding that the key question to answer to determine whether a parody of a well-known trade mark is lawful depends on whether that use at issue is use as a trade mark. Case law of the CJEU indicates that trade mark infringement can also occur when a sign is used non-distinctively: for example, in Arsenal the fact the trade mark was used a badge of affiliation/loyalty did not exclude an infringement. The same approach was adopted in cases like Adidas Solomon in relation to decorative uses.

The fact that the Belgian court has framed the referral within a fundamental rights perspective makes it all more interesting. Article 52 of the EU Charter states that any limitation on the exercise of the rights and freedoms recognized by that instrument – that is the case of both freedom of expression under Article 11 and intellectual property under Article 17(2) – must be provided for by law and respect the essence or, to borrow from the language employed in the Opinion of AG Saugmandsgaard Øe in Poland (para 99)the "untouchable core" of those rights and freedoms.

In sum: stay tuned!

[Originally published on The IPKat on 9 July 2023]