International Registration of Art as a Trademark and Matters of Infringement

Artwork that is to be considered for trademark registration must be unique, descriptive, and have secondary meaning. For example, the Vitruvian Man can be used as a registered trademark as long as secondary meaning is used to distinguish the use and function of the product. The artwork itself – from an intellectual property perspective – is in the public domain. A search of current trademarks should be performed to determine if the artwork is distinctive and available for trademark use. If so, the Vitruvian Man can be used as a trademark.

Image: The Vitrivian Man by Leonardo da Vinci (c. 1490)

Trademark applicants have several options for international registration of marks. Article 15 of the Trade-Related Aspects of Intellectual Property (TRIPS) agreement stipulates that all candidates for trademark registration be deemed eligible. Under the Madrid System, eligibility for trademark consists of several factors: (1) distinctiveness, (2) function or purpose of the trademark to aid in distinguishing among various trademarks, (3) legal, not deceptive, not misleading, and (4) availability of the mark. Types of ineligible characteristics for trademarks include generic and descriptive terminology. Numbers and letters for proposed trademarks are also ineligible, as are ornamental marks. Furthermore, candidates that resemble state or government insignia, symbols, or emblems; too synonymous with trademarks currently in circulation, or are incongruous with public morality are ineligible for trademark registration.

According to European Union (EU) Trademarks Regulation 2017, Article 15, and the 1994 Trademark Act, section 12(1), the trademarked goods are considered exhausted at first sale. The trademark can be sold again without penalty unless the original trademark owner can demonstrate that the original brand reputation has suffered damage as a result of the resold goods. See Case C‑59/08, Copad SA v Christian Dior Couture SA.

Trademark infringement occurs with (1) imitation of goods (counterfeiting) and (2) resale of trademarked products. Under Brussels I, the trademark enforcer can sue at the place of infringing activity, the place in which the damaging effects of the infringing activity occurred, or the infringer’s domicile. Consequently, a UK trademark owner can sue a Berlin infringer in Germany for marketing Class 3, 18, and 25 infringing (counterfeited) products. Trademark disputes are also heard at the trademark courts in European Union member states, governed by EU Trademark Regulation civil law.

A trademark owner can enforce its trademark online through notice and take-down services and through targeting website hosts and internet service providers for enforcement of the trademark. Another way to mitigate infringement, is to issue a “cease and desist” letter. A trademark owner may obtain an injunction (interlocutory injunction) to prevent the sale of the infringing products. Still another option is to attempt alternative dispute resolution. Moreover, the infringing products may be seized. If dealing with issues of counterfeiting, criminal activity may be at issue. Thus, law enforcement (a public prosecutor) can be engaged to aid in pursuing the case.

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