Trademark Law and Freedom of Expression: Toward New Criteria Justifying Infringement of Trademarks

Judgment of the Court of Justice of the European Union, Case C-298/23, Inter IKEA Systems

More broadly, this case reignites the long-standing debate over parody in trademark law.

Background Information

The dispute pitted the well-known IKEA brand against the Flemish party Vlaams Belang, which had launched a campaign titled “The IKEA Plan: Immigration Can Really Be Done Differently, ” using IKEA’s color scheme and the characters from its assembly instructions.

IKEA objected, arguing that this communication risked creating, in the public’s mind, an association between the brand and the political party’s positions. It therefore filed an infringement action with the Brussels court, based on Article 9(2)(c) of Regulation 2017/1001 and Article 10(2), (c) of Directive 2015/2436, which allow the owner of a well-known trademark to prohibit the use of an identical or similar sign that takes unfair advantage of its distinctiveness or reputation. The political party did not dispute the unauthorized use of the sign but invoked freedom of political expression to justify it.

In response to a request for a preliminary ruling, the Court of Justice was thus required to determine whether freedom of expression could constitute a “valid reason” for the use of third-party trademarks.

Freedom of expression does indeed justify an infringement of trademark rights

The Court considers that freedom of expression may constitute a “valid reason” capable of justifying the use of a third party’s well-known trademark.

However, this exception is permissible only if the third party can demonstrate specific reasons justifying the use of the trademark and that such use falls within the scope of the third party’s freedom of expression.

The Grand Chamber therefore weighs the competing interests in order to resolve the dispute.

This involves striking a balance between two fundamental rights: on the one hand, freedom of expression, enshrined in Article 11 of the Charter of Fundamental Rights of the European Union, and on the other hand, the protection of intellectual property rights, recognized in Article 17 of the same Charter.

While the Court refuses to establish a theoretical hierarchy between these two rights, the detailed practical criteria appear to indirectly establish a hierarchy between them.

Thus, the use of third-party trademarks is permitted if the following conditions are met:

• Intent and good faith in the use of the trademark: the use must be motivated solely by the desire to exercise freedom of expression, without any intention to infringe upon the trademark or to profit from its reputation;
• Contribution to a debate of public interest: the judge must determine whether the expression contributes to a debate of public interest and whether or not it is part of a strictly commercial context;
• The consequences for the trademark owner: while the use of the trademark will inevitably infringe upon it, such infringement must not be disproportionate.

Toward a Reopening of the Debate on the Parody Defense?

Until now, the answer to this question was clear: No, there is no parody exception in trademark law.

Two isolated court decisions had cast doubt on the matter in France, but fortunately, they remained isolated cases in the broader body of case law (Court of Cassation, decisions of April 8, 2008, Greenpeace v. Areva and Greenpeace v. Esso).

The judges therefore viewed infringements of third-party trademarks through the lens of the Arsenal Football Club case law, ECJ, November 12, 2002, C-206/01, which establishes that the use of a third party’s trademark is prohibited whenever it is made in the context of business, understood as the context of seeking a direct or indirect economic advantage.

In light of this decision, as long as the use is made in a selfless manner, without seeking any direct or indirect economic benefit, the use is permitted, without the need to take a position on the (often rather vague) debate over freedom of expression.

In light of the new criteria adopted, the significance of the Arsenal Football Club case law is partially diminished in favor of arguments regarding the contribution of the trademark’s use to public discourse.

One thing is certain, then: the long-standing debate over the balance between trademark law and freedom of expression is far from over, and we can only hope that objective criteria for assessment will be prioritized…

LEGIMARK, an intellectual property consulting firm, is available to answer any questions you may have regarding trademark law.

Photo credit: Ian Muttoo – License