The legal issues of protecting your art with trademarks in Europe

What you need to know (in a nutshell)

1. Artists can incorporate another person’s registered trademark in their work of art as long as it is the original result of a creative design process that is not aimed at damaging the trademark or the trademark owner.
2. The Benelux Court of Justice ruled that artistic freedom, as an aspect of the artist’s right to freedom of expression, may constitute ‘due cause’ for the use of the trademark within the meaning of the relevant legal provision (Article 2.20 (2)(d) Benelux Convention on Intellectual Property).
3. Intellectual property rights are protected under Article 1 Protocol to the Convention for the protection of human rights and fundamental freedoms (ECHR), and artistic freedom is protected under Article 10 ECHR. Both rights should be weighed in the context of the particular circumstance.

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Art incorporating registered trademarks may be permissible, as long as it is not created to harm the mark or its owner.

On 14 Oct 2019, the Benelux Court of Justice ruled against Cedric Peers’ use of Dom Perignon’s trademarks in his artwork per Moet Hennesy.

Mr. Peers’ artworks feature Dom Perignon’s logo and bottles, with women in scanty attire. He terms his style ‘contemporary’, combining pointillism & pop-art. However, the judge describes it as having an “ironic & sometimes erotic” edge.

Benelux Court of Justice deemed artistic freedom part of an artist’s right to express, therefore a valid ‘due cause’ under BCIP Article 2.20(2)(d).

The Advocate General (AG) noted the Court of Justice’s ruling on ‘due cause’ in Article 2.20 (2)(c) BCIP balances interests between trademark owners and third parties, thus logically applies to Article 2.20 (2)(d) for transparency & legal certainty benefit.

Article 1 of the ECHR protects intellectual property rights, granting every person peaceful enjoyment of their possessions.

Article 2.20 (2)(d) BCIP sets the standard, while Art 10 ECHR protects artistic freedom as part of free expression. Both rights must be balanced in relation to specific situations - protection isn’t absolute.

European Court of Human Rights case law shows freedom of artistic expression is essential for democratic societies and individuals. Restrictions are only allowed if a ‘pressing social need’ is present, so restrictions are hard to justify in most cases (Article 10(2) ECHR).

The AG’s ruling deems using the trademark in art a valid cause under Article 2.20 (2)(d), provided the artist’s creative process transforms reality with a personal touch. The requirement of an ‘original result’ is likely not overly stringent.

Article 2.20 (2)(d) BCIP details three grounds of trademark infringement, incl. ‘free-riding’, i.e., exploiting a mark’s reputational benefit without justification.

The AG discerned use of a trademark in art serves purposes other than ‘branding’ and creative processes can drive social dialogue. If the artist uses of the sign with due cause then it may not be considered trademark infringement.

Unauthorised use of a trademark may harm its distinctiveness and weaken it as an indicator of product origin.

Mr. Peers’ art maintains Dom Perignon’s distinctiveness, ensuring no loss of association with champagne amongst consumers.

Trademark infringement may occur if the use of the sign harms reputation, but the AG finds a sufficient distance between artistic expression and brand as long as the artist stays within the freedom of speech limits.

Brands in the limelight must accept wider criticism, having sought out fame.

The AG and Benelux Court of Justice asserted ‘The Damn Perignon Collection’ description wouldn’t damage the brand’s appeal or hamper customer purchase, as it didn’t question its quality.

Court of Justice ruling confirms artistic expression takes precedence over trademark law.