Paintings cannot be registered as figurative trademarks

The Court of Patent Appeals has delivered its judgment in a case involving the use of paintings as figurative trademarks for food and beverages (PBR 08-005, 08-007, 08-050).
In 2007 the Swedish Patent and Registration Office refused three applications by Kvibergs Marknad AB for the registration of trademarks consisting of the reproduction of famous paintings on the grounds that they were decorative, rather than distinctive. According to the Swedish Trademark Act, trademarks that lack distinctiveness are not eligible for registration.

The Patent and Registration Office stated that the paintings in question - by PS Kröyer, Alexander Roslin and Gustav Klimt, respectively - would be perceived only as paintings, and not as trademarks distinguishing the products of the applicant.

The Court of Patent Appeals agreed with the conclusions of the office with regard to two of the paintings. It stated that, where a trademark is made up of elements that are not a means of individualisation of the product, it will not be perceived as a distinctive mark - this is particularly true where an element of the mark is well known in a different context. According to the court, the two trademarks at issue would be viewed purely as a decoration of the goods. Therefore, they lacked distinctiveness and could not be registered as trademarks.

However, with regard to one of the marks applied for, the court pointed out that it consisted of a figurative element together with a word of a suggestive nature. According to the court, this figurative mark could function as a trademark and, therefore, the bar to registration had been overcome. The court directed that the Patent and Registration Office reassess the application in light of the court's decision.

This decision demonstrates that, in order to maintain a line between the scope of copyright protection and that of trademark protection, it is necessary to assess what is distinctive and what is not - otherwise, there may be a conflict between the holders of different IP rights.

The decision demonstrates that it is important to maintain a demarcation between trademark rights and other IP rights. It is not sufficient to use a sign that is protected as another IP right and claim that it is distinctive only because of the earlier protection. The court emphasised that the trademark itself should be distinctive.

Tom Kronhöffer and Sofia Ekdahl, MAQS Law Firm, Stockholm

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