26 Oct
2021

Cumulative protection of trademarks, designs and works of art

The possibilities for obtaining cumulative protection of business identifiers are interesting for both practical and legal reasons. Many names are used as trademarks, company names and domain names, and it would be inappropriate if these rights could not be cumulated. If you have designed a new piece of furniture, jewellery or another form of applied art, the work in question may be protected by copyright. However, this cannot be known with certainty until it has been established, typically in connection with a lawsuit, and it is therefore important to know whether it is possible to have the design of the new product registered as trademark or design so that you can prove that you have such a right. In addition, designs of a product or packaging develops from being ‘only’ a design to also functioning as a trademark, and in such a situation it is advisable to have the product or packaging protected too.

This chapter considers the possibilities of obtaining trademark protection for signs that are also, or have previously been, protected by either a design right or copyright.

Legislative framework

Article 4 of the EU Trademark Regulation states that an EU trademark may consist of any signs including but not limited to “words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging”. It is immediately clear that there may be an overlap between trademark law and copyright, at least in regard to where images, the shape of goods and sounds are concerned, as well as between trademark law and design law, particularly regarding the shape of a product and its packaging.

The overlap in the law, and subsequently the possibility of cumulative protection, is emphasised by the definition of the various ‘types of mark’ that are described in Section 3(1) of the Commission Implementing Regulation (EU) 2018/626. A ‘shape mark’ is defined, for example, as a trademark that consists of or extends to “a three-dimensional shape, including containers, packaging, the product itself or their appearance”. This is very close to the definition of a ‘design’ in Article 3 of the Community Design Regulation, which suggests that the “appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”, and what in a copyright context is described as ‘applied art’. Similarly, a ‘multimedia mark’ is defined as a mark “consisting of, or extending to, a combination of image and sound”, which is very close to the description of copyright-protected multimedia products.

The EU Trademark Regulation and the Trademark Directive do not address directly the issue of the interplay between trademarks, designs and copyrights. However, that cumulative protection is possible was, partially at least, confirmed by the European Court of Justice (ECJ) in Case C-237/19 (Gömböc/Szellemi). In paragraph 53, the ECJ stated: “It is apparent from the above that the fact that the appearance of a product is protected as a design does not prevent a sign consisting of the shape of that product from benefiting from protection under trade mark law, provided that the conditions for registration of that sign as a trade mark are satisfied.”

Cumulative protection

Slogans and titles

Individual words and word combinations can be protected as trademarks. This applies to both art words, such as NILFISK and INTEL, as well as words taken from the public domain, as long as the words in question are not descriptive of the goods and services for which the marks are used. Single words that have a dictionary meaning in the public domain are often considered public property and cannot therefore obtain copyright protection, but neither can ‘coined words’ possess sufficient originality to be copyright protected, even though they are quite original.

The possibility of cumulative protection of word marks as copyrighted works is therefore only relevant to assess for marks consisting of several words, which in practice means slogans and titles.

Slogans or ‘pay-offs’ such as ‘Wet Dust Can’t Fly’ and ‘Probably the Best Shoes in the World’ are also word marks, which can be registered as trademarks if they are distinctive. Even short text meets the requirement of originality under copyright law (11 words will suffice, see ECJ Case 5/08 Infopaq) and can therefore constitute a literary work. A trademark in the form of a slogan can, in principle, also be protected by copyright. However, at the time of writing, the author is unaware of any judicial decisions that have recognised the copyright of slogans.

Titles will often be descriptive, such as Murder in the Archipelago for a crime novel and The Seaside Hotel for a television series about life at a seaside hotel, in which case they enjoy neither copyright nor trademark protection. Conversely, distinctive titles for films, books and music releases, among others, can be protected trademarks. Examples include titles such as The Heroic Quest of the Valiant Prince Ivandoe, Harry Potter and the Prisoner of Azkaban and World of Warcraft.

Logos

Logos that are distinctive according to the trademark definition will, in most cases, also be original works, and therefore protected under copyright. This is also the legal basis for advertising agencies’ design of and transfer of the rights to logos.

Many logos are registered not only as trademarks but also as designs. The parallel protection may be justified by the fact that the exclusive right of trademark law does not necessarily cover all forms of use of the logo. If a logo is used exclusively as decoration, it is not a question of trademark use (see ECJ Case C-408/01, Adidas/Fitnessworld).

Characters

Characters from books, films or computer games and toy figures are often registered as trademarks. In many cases, the figures will also be copyrighted. Many will have probably started their lives as copyrighted works, only to be registered and used as trademarks at a later stage.

Applied arts

The same starting point applies to objects of applied art, such as Kaj Bøjesen’s wooden monkey and Arne Jacobsen’s chair known as ‘The Egg’, which undoubtedly enjoy copyright protection and are also registered as EU trademarks.

In this context, the practice regarding the registration of such works as trademarks is fluctuating and the subject is also the subject of a number of considerations in theory, particularly in relation to the exception in Article 7(e) of the EU Trademark Regulation.

Jingles

Musical works enjoy copyright protection, but how ‘long’ a piece of music must be for it to be considered original has not yet been established in practice. It is therefore unclear whether the registered sound mark of the ‘winning’ melody of a betting company consisting of three notes, enjoys copyright protection, while a much longer registered sound mark for a company presumably does.

Multimedia marks and motion marks

Mulitmedia marks are an interesting area that has only recently started to emerge. One example of such registered multimedia marks is a mark that consists of a 16-second long sequence where an animated character moves to the sound of music and to the final, deserved, applause An example of a motion mark might be where an orange line starts on the left side of a screen and snakes across a green background over five seconds Both of these examples have been registered and enjoy protection.

Buildings

In Case C-421/13, to the surprise of many, the ECJ concluded that the graphic representation of the design of Apple’s stores meets the conditions necessary for registration as a trademark – a trademark should be reproduced “in a manner that enables the competent authorities and the public to determine the clear and precise object of the protection afforded to its proprietor”. A number of other shop designs have since been registered, such as the reproduction of the Guggenheim Museum in Bilbao, which has been registered as an EU trademark.

In the case of both marks, there can be no doubt that the reproductions also enjoy copyright protection and that they did so before they were applied for trademarks.

Situations where cumulative protection is not possible

There are situations where cumulative protection is not possible, namely where the trademark consists

exclusively of:

  • the shape or another characteristic of the goods that results from the nature of the goods themselves;
  • the shape or another characteristic of the goods that is necessary to obtain a technical result; or
  • the shape or another characteristic that gives substantial value to the goods.

This follows from Article 7(e) of the EU Trademark Regulation and the provisions have, among other things, been applied to refuse registration of the marks in Case C-205/13 (involving a chair), Cases T 601/17 and C-936/19 P (regarding a rubiks cube) and Case T-508/08.

Comment

There are many reasons why an organisation might wish to apply for cumulative protection. Quite often the original work is copyrighted and a company has realised that it can expand its IP portfolio into other valuable areas (eg, clothing or toys) using their existing copyright. Similarly, as the law surrounding intellectual property evolves, this opens up the possibility of extending protections into previously unimaginable areas such as the multimedia mark.

This evolution will continue, with cumulative protection gaining prominence as rights are tested in the courts and as case law grows. It is not yet known what cumulative protection will incorporate, with interesting decisions and arguments being made in cases involving, for example, smells and tastes. What is known, however, is that cumulative protection will continue to expand.