Free signs and free use: How to offer room for freedom of expression within the trademark system

Abstract

The discussion on trademark law and freedom of expression often focuses on cases where the courts invoked the fundamental guarantee of free speech as an external, higher ranking norm to prevent trademark protection from encroaching upon political, artistic or commercial freedom of expression. The present contribution to the debate, by contrast, focuses on different ways of ensuring sufficient room for free speech within the trademark system: - on the one hand, trademark law recognizes the need to keep certain signs free from protection. Signs may fall outside the trademark system by virtue of an outright exclusion from protection. They may also remain free because of a lack of distinctive character; - on the other hand, trademark law can restrict the scope of exclusive rights. The rights of trademark owners may be limited through strict requirements of use in the course of trade and use as a trademark. They may also remain limited because of the application of strict tests when determining a likelihood of confusion or dilution. Moreover, certain forms of use can be exempted from the control of the trademark owner by adopting exceptions. These different strategies can be seen as complementary tools: the recognition of a need to keep signs free prevents traders from acquiring trademark rights in the first place. Restrictions on the scope of protection ensure the availability of signs once trademark protection is acquired. The application of these complementary tools leads to a public domain consisting of unprotected signs that are unencumbered by trademark rights and protected signs that remain free to common use in several respects. The public domain supported by trademark law thus offers a reservoir of unprotected and protected signs that are available for political, artistic and commercial speech. In the following analysis, EU legislation and court decisions will be discussed that recognize a need to keep signs free from trademark protection (section 2) and restrict the scope of exclusive rights (section 3). The analysis gives rise to the question whether EU trademark law offers a satisfactory framework for reconciling trademark protection with freedom of expression (section 4). Drawing conclusions, potential amendments to EU trademark law will be considered, including recent proposals made by the European Commission (section 5).