Trademark Law and Cultural Heritage Marketing Strategies for SME’s based on Cultural Symbols WIPO Seminar, Geneva, May 18-20, 2009 Hendrik Jan Bulte, VU University Amsterdam

2 introduction » marketing strategies and trademark employability » trademark and cultural symbols: examples » current legal framework » defining the ‘cultural need’; cultural grounds for refusal conclusion

3 Implications:   undermining the rationale of copyright law; reviving of copyrights, remonopolising parts of cultural heritage   redefinition of meaning in commerce and ‘definition power’   free riding on the status, reputation and favourable image of cultural symbols

4 Phrasing the question: Could we define a ‘cultural need’ to keep certain signs free from trademark protection Phrasing the question: Could we define a ‘cultural need’ to keep certain signs free from trademark protection?

5 MARKETING STRATEGIES AND ‘TRADEMARK EMPLOYABILITY’

6 Article 15 (1) TRIPs Agreement: Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. […]

7 TRADEMARKS AND CULTURE: EXAMPLES

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9 BPatG , 24 W (pat) 188/96, GRUR 1998, p (translation from German): “The painting of Mona Lisa is a frequently used, publicly known advertising theme, which aims to stimulate purchases and attract the attentiveness of the public; it will not be regarded as a source identifier, but merely as a means to bring the products denoted into the foreground; these advertising qualities do not equate with the distinctive character needed in order to obtain trademark protection.”

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11 ECJ Shield Mark/Kist, April 3, 2003, C-283/01, A-G Colomer (§ 52): “I find it more difficult to accept […] that a creation of the mind, which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the service he provides with an exclusivity which not even its author’s estate enjoys.”

Peer Gynt Suite (Edvard Grieg) Solveig’s Song

13 Peer Gynt Suite (Edvard Grieg) Morgenstimmung

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16 CURRENT LEGAL FRAMEWORK

17 Article 3 TMD (grounds for refusal or invalidity): 1. The following shall not be registered or if registered shall be liable to be declared invalid: […] (b) trade marks which are devoid of any distinctive character; […] (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; […] (f) trade marks which are contrary to public policy or to accepted principles of morality; […]

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19 Deterrent effect of potential trademark infringement

20 DEFINING THE CULTURAL NEED: CULTURAL GROUNDS FOR REFUSAL

21 Implications:   undermining the rationale of copyright law; reviving of copyrights, remonopolising parts of cultural heritage   redefinition of meaning in commerce and ‘definition power’

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23 THE END THANK YOU!