IS IT POSSIBLE TO REGISTER THE VIGELAND PARK STATUES AS TRADEMARKS?
The Assessment in Consideration of the Decisions of EFTA Court and Norwegian Industrial Property Office Appraisal.
The fact that historical and cultural values are considered to be public property which cannot be registered as trademarks is a provisional reason for rejection in the trademark legislation of most countries. However, the scope of the application of this judgment leads to debate in some cases. The decision to be examined in the article will reveal how the ruling was assessed by the Norwegian Industrial Property Office (NSMO) and the European Free Trade Association (EFTA) Court.
It should first be stated that EFTA is regional economic organization of Norway, Switzerland, Iceland, and Liechtenstein, which are not member states of the
European Union, and that the EFTA Court is the judicial organ of this organization. Gustav Vigeland was a famous Norwegian sculptor who died in 1943. The majority of his works are located in Vigeland Park, a sculpture park in Norway’s capital city of Oslo and one of Norway’s most popular tourist destinations. There are 214 of Vigeland’s sculptures exhibited in this park.
The most famous of his sculptures in the park are the “Angry Child” and the “Monolith”. Frogner Park, which involves Vigeland Park, is Oslo’s largest park and belongs to the Municipality of Oslo.
The copyright of the works of Gustav Vigeland who died in 1943, expired on January 1, 2014.
In 2013, the Municipality of Oslo applied to the NSMO to request the registration of around 90 visual works of art located in Vigeland Park, including the “Angry Child” and the “Monolith”, as trademarks. The NSMO rejected this application partly due to the lack of distinguishing qualities, descriptiveness, and being among the markers that add real value to the property. In the context of partial rejection decisions, products made from base metals, precious metals, paper, and printed materials were rejected, while goods such as games and toys were not rejected.
The Municipality of Oslo appealed these rejections and the appeal came before the NSMO Appeal Board for review. Before the Appeal Committee decides on the
objections, all proceedings will be ceased, and the EFTA Court consulted. The Appeal Board directs six questions to the EFTA Court. The Appeal Board’s focus on whether or not the proprietary demands of the public artwork as a trademark should be rejected on grounds of contradiction to public order.
One of the most important questions directed at the EFTA Court is whether it is contrary to public order to subject a work, copyright of which is expired, to a trademark protection claim. The Court’s answer to this question is that the indicated action cannot be considered as contradiction to public order in every case,
however, since some works may be regarded as cultural heritage of a nation, requesting trademark protection for this kind of works may be regarded as contradiction to public order. Examination in this direction should be done on a case by case basis. In the examination, the status of the work in the country concerned, the way it is perceived, and the nature of the goods and services covered by the trademark application should be considered. In addition, in the event that a work constitutes a serious threat to the values of the society in real and sufficient terms, it may be accepted that the registration of this work as a trademark may be contrary to public order.
Taking into account the EFTA Court’s opinion, the NSMO Appeal Board rejected the application due to violation of public order. According to the Appeals Board, the
works in question constitute important cultural values for the Norwegian community and are not appropriate to be registered as trademarks. It is stated in the decision of the Board that there may be a distinctive character of copyrighted works and these may be subject to trademark registration. However, the Board stated that the registration of copyrightable works as trademarks may, in some cases, conflict with the limited protection principle on which copyright protection is based.
Thus, one of the reasons for granting limited time protection to copyrights is to ensure that it becomes public property after the period of protection of the work expires. However, after the limited period of protection provided for by a copyright, the theoretically unlimited period protection through trademark registration will give anticompetitive, unfair advantage to the copy right owner. According to the Appeals Board, in such cases it is possible that the trademarked claim may be regarded as contradiction to the public order. When the request for registration of Vigeland’s works as a trademark was assessed in the light of the above factors, the Appeals Board reached the following results: Applications made by the Municipality of Oslo for the trademark of Vigeland’s works must be rejected for violating public order. That is, these works are the common cultural heritage of Norwegian society. Exclusive rights to be acquired through trademark registration will not only give the Municipality an unfair competitive advantage, but also limit the right of the society to access such works.
The decision of the EFTA Court and the NSMO Appeals Board created in the light of this decision clearly reveals several points. Firstly, in principle, it is possible to registers works that have expired copyright protection periods as trademarks. Secondly, it is possible that the registration requests of the works with important cultural value for the society to which they belong, for example to the cultural heritage of a nation, may be rejected due to being contrary to the public
order.
The fact that the applicant was the Municipality of Oslo was not considered as a factor for the decision to reject the application. According to the Board, the Municipality of Oslo wanted to control Vigeland’s art through registration as a trademark. This would be understandable, given the investments it made in the art and in the park and will probably reduce the risk of using the work of others against public order. Nevertheless, such a request or intention does not guarantee any legitimate interests protected by trademark law. Conversely, carrying out a registration with such a request or intention would also conflict with the considerations and essential social benefits underlying the subjection of copyright to a limited period of protection.
This decision on the works of Vigeland will guide us in the evaluation of trademark registration requests of common historical and cultural values encountered in Turkey in recent years.
GOssIP Magazine - Issue 46
Önder Erol ÜNSAL
Turkish Patent and Trademark Office
Industrial Property Expert
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