Towards a new copyrighttrademark interface - why (and how) signs with cultural significance should be kept outside trademark law

Abstract

To this day, trademark law and practice have not managed to eliminate a serious imbalance within the intellectual property system: while the functionality doctrine in trademark law can be employed to prevent overlaps between patent and trademark protection and achieve a far-reaching separation of industrial design and trademark protection, a comparably strong mechanism for policing the border between copyright and trademark protection has not evolved yet. As in the case of corresponding features of the patent and industrial design systems, however, indefinitely renewable trademark rights involve the risk of an artificial extension of the limited term of copyright protection and the impoverishment of the public domain of cultural expressions. Moreover, trademark protection may lead to free-riding on the reputation and positive image of cultural symbols, the blurring of a sign’s genuine cultural meaning through the attachment of commercial connotations, and the impairment of an open communication process in the cultural domain. Against this background, the following discussion of the need to recalibrate the copyright/trademark interface will first shed light on the societal importance of preserving the genuine meaning of artworks. On this basis, the current practice of accepting simultaneous and subsequent trademark protection will be criticized before arguing for the introduction of more robust grounds for refusal that allow the categorical exclusion of signs with cultural significance from trademark protection.