In a high-profile trademark infringement case involving Moët Hennessey Champagne Services (MHCS) – owner of the famous Champagne brand Dom Pérignon – and a Belgian painter, the courts were asked to strike a balance between the right to property, including intellectual property, and artistic freedom of expression. Both intellectual property and artistic freedom are recognised as fundamental rights by a number of conventions, most notably the European Convention on Human Rights and the EU Charter of Fundamental Rights.
Inter alia, it was held that where a mark is not effectively used to distinguish goods or services and its use takes unfair advantage of a mark’s commercial reputation to the owner’s detriment, that constitutes a violation of Article 10(6) of the EU Trademark Directive. A fine balance is thus essential to draw a line between protection of ones’ intellectual property and another’s freedom of expression, specifically where the rights of the latter overlap with those of the former. In its judgment, the court noted that it was essential to weigh in the two fundamental rights at issue. In doing so, it was first necessary to determine the criteria appropriate for striking that balance, before assessing the merits of the claim.
- the extent to which the expression has a commercial nature or purpose
- the extent to which the expression covers a general interest, is socially relevant or enters into a debate
- the relationship between those two criteria
- the degree of reputation of the trademark relied on
- the extent of the infringing use, its intensity and systematic nature as well as its coverage in terms of territory, time and volume, also having regard to the message which the expression aims to convey
- the extent to which the expression, and circumstances accompanying that expression, such as its name, title or way of promoting, affect the distinctive character, reputation and image of the trademark relied on (the ‘advertising function’)
- the extent to which the expression displays a proper creative contribution and the extent to which one attempted to prevent confusion or association with the trademark relied on, or the impression that there is a commercial or other link between the expression and the trademark owner (the ‘function of indicating origin’), also having regard to the way in which the trademark owner secured a certain image and reputation for trademark through advertising and communication strategies.
In light of the above case study which is a mere example of the complexities that arise once a trademark owner initiates commercial activities and becomes exposed to the tort of passing-off we lay down the key benefits when registering your trademark nationally and/or as a community mark via EUIPO.
- Protection of your mark’s value
- Acquiring of a property asset that will grow in monetary value over time / use
- Safeguard your mark from other competitive marks
- Definitive assumption of your intellectual property rights
- Prevention of your mark’s forgery / imitation and fraudulent misuse
- Legal rights to deter a third party abuse from infringing your IP rights
- Legal action with interim proceedings for immediate cessation from passing-off by third party abusers.
- Legal claim for nominal and special damages stemming out from anti-trust rules and unfair competition EU /international law.
- Register your mark in the Community with a single filing in one language, enforceable in all member states.
- The Community mark grants the owner exclusivity rights in all current and future member states of the EU at a low cost.
- You are eligible to safeguard your mark in the European market and get access to over 500 million consumers.
- The Community mark remains in force for 10 years upon registration and can be renewed indefinitely for a period of 10 years per renewal.
For more info on registering your mark in Cyprus or the EU, please contact the author of this article Mr. Constantinos Nerantzakis at [email protected] and get a free national / EU name search consultation prior to registering your trademark or send us a general inquiry at [email protected]