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2017   |   Book 1

Case

E-5/16

Municipality of Oslo

(Directive 2008/95/EC – Trade Mark – Copyright – Public policy – Public domain – Distinctiveness – Descriptiveness – Signs consisting exclusively of the shape which gives substantial value to the goods)

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Table of contents


SummaryPage
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of the Judgment

1 In principle, nothing prevents a sign from being protected under both trade mark and copyright law.

2 Copyright protection provides for an incentive to contribute to the enrichment of the economy and of society at large. The lapse of copyright protection serves the principles of legal certainty and protection of legitimate expectations, by providing a pre-determined time frame after which anyone can draw from ideas and creative content of others without limitation. The considerations relating to the public domain also serve the general interest in protecting creations of the mind from commercial greed and in ensuring the freedom of the arts.

3 The public domain entails the absence of individual protection for, or exclusive rights to, a work. Once communicated, creative content belongs, as a matter of principle, to the public domain. In other words, the fact that works are part of the public domain is not a consequence of the lapse of copyright protection. Rather, protection is the exception to the rule that creative content becomes part of the public domain once communicated.

4 Trade marks, in turn, guarantee the identity of the origin of the marked product. Thus, the protection of trade marks ensures market transparency and assumes an essential role in a system of undistorted competition. In order to attain these aims, it is essential that the term of protection for trade marks is, in principle, indefinite.

5 A trade mark based entirely on copyright protected work carries a certain risk of monopolisation of the sign for a specific purpose. The interest in safeguarding the public domain, however, speaks in favour of the absence of individual protection for, or exclusive rights to, the artwork on which the mark is based.

6 PointsPage
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(b) to (d) of Article 3(1) of Directive 2008/95/EC (“the Trade Mark Directive”) do not ensure that a particular sign is, in general, kept free for use. Thus, these provisions do not guarantee that the work remains within the public domain. Article 3(1)(e) of the Trade Mark Directive also does not ensure that works, in general, are kept within the public domain.

7 In comparison, the denial of registration of a trade mark provided for in Article 3(1)(f) of the Trade Mark Directive is irrespective of the classes of goods and services in relation to which the sign is used and cannot be overcome by acquired distinctiveness.

8 Article 3(1)(f) of the Trade Mark Directive covers two alternatives, which may each serve as a ground for refusal. In this regard, refusal based on grounds of “public policy” must be based on an assessment of objective criteria whereas an objection to a trade mark based on “accepted principles of morality” concerns an assessment of subjective values.

9 As regards the assessment whether a trade mark would be contrary to “accepted principles of morality”, certain pieces of art may enjoy a particular status as prominent parts of a nation’s cultural heritage, an emblem of sovereignty or of the nation’s foundations and values. A trade mark registration may even be considered a misappropriation or a desecration of the artist’s work, in particular if it is granted for goods or services that contradict the values of the artist or the message communicated through the artwork in question. Thus, the assessment of whether trade mark registration of a sign that consists of an artwork would be contrary to accepted principles of morality must be carried out on a case-by-case basis.

10 As regards the second alternative of Article 3(1)(f) of the Trade Mark Directive, which concerns signs that must be refused registration when they are contrary to public policy, the notion of “public policy” refers to principles and standards regarded to be of a fundamental concernPage
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to the State and the whole of society. Grounds of public policy, may only be relied on if there is a genuine and sufficiently serious threat to a fundamental interest of society. An artwork may be refused registration, for example, under the circumstances that its registration is regarded as a genuine and serious threat to certain fundamental values or where the need to safeguard the public domain, itself, is considered a fundamental interest of society.

11 Article 3(1)(e)(iii) of the Trade Mark Directive may apply to two-dimensional representations of three-dimensional shapes, including sculptures.

12 Article 3(1)(c) of the Trade Mark Directive must be interpreted as being applicable to two-dimensional and three-dimensional representations of the shape of goods.

13 Article 3(1)(b) of the Trade Mark Directive must be interpreted as meaning that where a sign is descriptive within the meaning of Article 3(1)(c), that sign necessarily lacks distinctiveness under Article 3(1)(b).

JudgmentPage
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of the Court

6 April 2017

(Directive 2008/95/EC – Trade mark – Copyright – Public policy – Public domain – Distinctiveness – Descriptiveness – Signs consisting exclusively of the shape which gives substantial value to the goods)

In Case E-5/16,

REQUEST to the Court pursuant to Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice by the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter), in the case of

Municipality of Oslo

concerning the interpretation of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, and in particular Article 3(1)(b) to (f) thereof,

ThePage
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Court

composed of: Carl Baudenbacher, President and Judge-Rapporteur, Per Christiansen and Páll Hreinsson, Judges,

Registrar: Gunnar Selvik,

having considered the written observations submitted on behalf of:

the Municipality of Oslo (Oslo kommune) (“Oslo Municipality”), represented by Felix Reimers and Vincent Tsang, advocates;

the Norwegian Government, represented by Ida Thue, advocate, Office of the Attorney General (Civil Affairs), and Linn Edvartsen, Senior Adviser, Ministry of Foreign Affairs, acting as Agents;

the EFTA Surveillance Authority (“ESA”), represented by Carsten Zatschler, Øyvind Bø and Marlene Lie Hakkebo, Members of its Department of Legal & Executive Affairs, acting as Agents;

the European Commission (“the Commission”), represented by Julie Samnadda and Tibor Scharf, Members of its Legal Service, acting as Agents;

the Czech Government, represented by Lucie Březinová and Jiří Vláčil, Ministry of Foreign Affairs, acting as Agents;

the German Government, represented by Thomas Henze and Mathias Hellman, acting as Agents; and

the United Kingdom Government, represented by Julia Kraehling, Cabinet Office European Law Division, Treasury Solicitor’s Department, acting as Agent, and by Nicholas Saunders, Barrister,

havingPage
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regard to the Report for the Hearing,

having heard oral argument of Oslo Municipality, represented by Felix Reimers and Vincent Tsang; the Norwegian Government, represented by Ida Thue; ESA, represented by Marlene Lie Hakkebo and Øyvind Bø; the Commission, represented by Julie Samnadda and Tibor Scharf; the German Government, represented by Jan Techert, acting as Agent; and the United Kingdom Government, represented by Clare Brodie, acting as Agent, and Nicholas Saunders, at the hearing on 12 October 2016,

gives the following

Judgment

I Legal background

EEA law

1 The first and second paragraphs of Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice (“SCA”) read as follows:

The EFTA Court shall have jurisdiction to give advisory opinions on the interpretation of the EEA Agreement.

Where such a question is raised before any court or tribunal in an EFTA State, that court or tribunal may, if it considers it necessary to enable it to give judgment, request the EFTA Court to give such an opinion.

2 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25, and EEA Supplement 2015 No 3, p. 342) (“the Trade Mark Directive”) was made part of the EEAPage
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Agreement by Joint Committee Decision No 146/2009 of 4 December 2009 (OJ 2010 L 62, p. 43, and EEA Supplement 2010 No 12, p. 42), and is referred to at point 9h of Annex XVII (Intellectual Property) to the EEA Agreement. The decision entered into force on 5 December 2009, and the time limit for the EFTA States to implement the Trade Mark Directive expired on the same date.

3 Recital 13 in the preamble to the Trade Mark Directive reads:

All Member States are bound by the Paris Convention for the Protection of Industrial Property. It is necessary that the provisions of this Directive should be entirely consistent with those of the said Convention. The obligations of the Member States resulting from that Convention should not be affected by this Directive. Where appropriate, the second paragraph of Article 307 of the Treaty should apply.

4 Article 2 of the Trade Mark Directive reads:

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

5 Article 3(1) of the Trade Mark Directive includes the following grounds for refusal or invalidity:

1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

(b) trade marks which are devoid of any distinctive character;

(c) tradePage
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marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

(e) signs which consist exclusively of:

(i) the shape which results from the nature of the goods themselves;

(ii) the shape of goods which is necessary to obtain a technical result;

(iii) the shape which gives substantial value to the goods;

(f) trade marks which are contrary to public policy or to accepted principles of morality;

6 Article 3(2) of the Trade Mark Directive reads, in extract, as follows:

2. Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that:

(a) the use of that trade mark may be prohibited pursuant to provisions of law other than trade mark law of the Member State concerned or of the Community;

(d) the application for registration of the trade mark was made in bad faith by the applicant.

7 ArticlePage
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 3(3) of the Trade Mark Directive reads as follows:

3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.

8 Article 4(4)(c)(iii) of the Trade Mark Directive reads as follows:

4. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(c) the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (b) of this paragraph and in particular:

(iii) a copyright;

9 Directive 2006/116/EC of the European Parliament and the Council of 12 December 2006 on the term of protection of copyright and certain related rights (OJ 2006 L 372, p. 12, and EEA Supplement 2010 No 38, p. 150) (“the Copyright Directive”) was made part of the EEA Agreement by Joint Committee Decision No 56/2007 of 8 June 2007 (OJ 2007 L 266, p. 17, and EEA Supplement 2007 No 48, p. 13), and is referred to at point 9f of Annex XVII (Intellectual Property) to the EEA Agreement. The decision entered into force on 9 June 2007, and the time limit for the EFTA States to implement the Directive expired on the same date.

10 RecitalPage
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11 in the preamble to the Copyright Directive reads as follows:

The level of protection of copyright and related rights should be high, since those rights are fundamental to intellectual creation. Their protection ensures the maintenance and development of creativity in the interest of authors, cultural industries, consumers and society as a whole.

11 Article 1(1) of the Copyright Directive reads as follows:

1. The rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public.

12 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10, and EEA Supplement 2007 No 16, p. 298) (“the Infosoc Directive”) was made part of the EEA Agreement by Joint Committee Decision No 110/2004 of 9 July 2004 (OJ 2004 L 376, p. 45, and EEA Supplement 2004 No 65, p. 30), and is referred to at point 9e of Annex XVII (Intellectual Property) to the EEA Agreement. The decision entered into force on 1 August 2005, and the time limit for the EFTA States to implement the Directive expired on the same date.

13 Recital 2 in the preamble to the Infosoc Directive reads as follows:

The European Council, meeting at Corfu on 24 and 25 June 1994, stressed the need to create a general and flexible legal framework at Community level in order to foster the development of the information society in Europe. This requires, inter alia, the existence of an internal market for new products and services. Important Community legislation toPage
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ensure such a regulatory framework is already in place or its adoption is well under way. Copyright and related rights play an important role in this context as they protect and stimulate the development and marketing of new products and services and the creation and exploitation of their creative content.

14 Recital 4 in the preamble to the Infosoc Directive reads as follows:

A harmonised legal framework on copyright and related rights, through increased legal certainty and while providing for a high level of protection of intellectual property, will foster substantial investment in creativity and innovation, including network infrastructure, and lead in turn to growth and increased competitiveness of European industry, both in the area of content provision and information technology and more generally across a wide range of industrial and cultural sectors. This will safeguard employment and encourage new job creation.

National law

15 The Directive was implemented in Norway by Act No 8 of 26 March 2010 on protection of trade marks (the Trade Marks Act) and Regulation of 25 June 2010 No 937 (the Trade Marks Regulation).

16 Section 2 second paragraph of the Trade Marks Act reads:

Trade mark rights may not be attained for signs that consist exclusively of a shape that results from the nature of the goods themselves, is necessary to obtain a technical result or adds substantial value to the goods.

17 Section 14 first paragraph second sentence reads:

[In order to be registered, a trade mark] must have a distinctive character as a token for the kind of goods or services it represents.

18 SectionPage
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14 second paragraph (a) of the Trade Marks Act reads:

A trade mark may not be registered if it exclusively or subject to only minor changes or additions consists of signs or indications that serve to …

a) designate the kind, quality, quantity, purpose, value or geographical origin, … or other characteristics of the goods or services, …

19 Section 15 first paragraph (a) of the Trade Marks Act reads:

A trade mark cannot be registered if it:

a) is contrary to law, public order or accepted principles of morality;

II Facts and procedure

20 In view of the actual or imminent lapse of intellectual property protection for copyright protected works by some Norwegian artists, Oslo Municipality, which manages several of these rights, applied for trade mark protection for a number of artworks that will become freely available under the Norwegian Copyright Act. Oslo Municipality applied for trade mark protection with regard to several artworks of the oeuvre of Gustav Vigeland, one of the most eminent Norwegian sculptors. The following works of art are mentioned in the request as examples.

21 The Angry Boy (Sinnataggen) by Gustav Vigeland:

The Angry Boy (Sinnataggen) by Gustav Vigeland

22 CastPage
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iron gate by Gustav Vigeland:

Cast iron gate by Gustav Vigeland

23 Section of cast iron gate by Gustav Vigeland:

Section of cast iron gate by Gustav Vigeland

24 The statute Egil Skallagrimsson by Gustav Vigeland:

The statute Egil Skallagrimsson by Gustav Vigeland

25 ThePage
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Monolith (Monolitten) by Gustav Vigeland:

The Monolith (Monolitten) by Gustav Vigeland

26 A sculpture by Gustav Vigeland:

A sculpture by Gustav Vigeland

The dispute before the Board of Appeal

27 In the case at hand, the Board of Appeal is called upon to decide on the appeals brought by Oslo Municipality against the refusal of the Norwegian Intellectual Property Office (“NIPO”) to register certain trade marks. The refusals were based, respectively, on Section 14 first paragraph of the Trade Marks Act on lack of distinctive character,Page
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Section 14 second paragraph (a) of the Trade Marks Act on descriptive marks and Section 2 second paragraph third alternative of the Trade Marks Act on trade marks that consist of a shape that adds substantial value to the goods. These provisions implement points (b), (c) and (e) of Article 3(1) of the Trade Mark Directive. With regard to some of the trade marks, registration was granted for certain types of goods and services.

28 The Board of Appeal takes the view that, in addition to the grounds considered by NIPO, other grounds may exist on which to refuse the registration of the trade marks. In particular, the Board of Appeal considers that the rule in Section 15 first paragraph (a) of the Trade Marks Act, which implements Article 3(1)(f) of the Trade Mark Directive, may be applicable.

29 The Board of Appeal questions whether the decision of the German Federal Patent Court in Mona Lisa can set a precedent in European law (reference is made to the Decision of 25 November 1997 of the German Federal Patent Court (Bundespatentgericht) in Case 24 W (pat) 188/96, GRUR 1998, p. 1021). The Board of Appeal observes that if trade mark protection of well-known works of art could only be refused on grounds of lack of distinctiveness, this would leave open the possibility for distinctiveness to be achieved through use thus qualifying the work for registration at a later stage. Consequently, any undertaking could, in principle, achieve trade mark protection for copyrighted works that become freely available, regardless of the cultural value of such works.

30 The Board of Appeal also refers to the Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark in which he found “it more difficult to accept … that a creation of the mind which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity whichPage
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not even its author’s estate enjoys” (C-283/01, EU:C:2003:197, point 52). The Board of Appeal inquires whether this view could have a bearing on the application of Article 3(1)(f) of the Trade Mark Directive.

31 The Board of Appeal referred the following questions to the Court:

1. May trade mark registration of works, for which the copyright protection period has expired, under certain circumstances, conflict with the prohibition in Article 3(1)(f) of the Trade Marks Directive on registering trade marks that are contrary to ‘public policy or … accepted principles of morality’?

2. If Question 1 is answered in the affirmative, will it have an impact on the assessment that the work is well-known and of great cultural value?

3. If Question 1 is answered in the affirmative, may factors or criteria other than those mentioned in Question 2 have a bearing on the assessment, and, if so, which ones?

4. Is Article 3(1)(e)(iii) of Directive 2008/95/EC applicable to two-dimensional representations of sculptures?

5. Is Article 3(1)(c) of Directive 2008/95/EC applicable as legal authority for refusing trade marks that are two or three-dimensional representations of the shape or appearance of the goods?

6. If Question 5 is answered in the affirmative, is Article 3(1)(b) and (c) of Directive 2008/95/EC to be understood to mean that the national registration authority, in assessing trade marks that consist of two or three-dimensional representations of the shape or appearance of the goods, must apply the assessment criterion of whether the design in question departs significantly from the norm or customs of the business sector, or may the grounds for refusal be that such a mark is descriptive of the shape or appearance of the goods?

32 ReferencePage
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is made to the Report for the Hearing for a fuller account of the legal framework, the facts, the procedure and the written observations submitted to the Court, which are mentioned or discussed hereinafter only insofar as is necessary for the reasoning of the Court.

III Admissibility

Arguments submitted to the Court

33 The Norwegian Government has argued that the case is inadmissible since the referring body does not constitute a court or tribunal within the meaning of Article 34 SCA. By contrast, ESA has submitted that the case is admissible. Oslo Municipality shares this view.

34 The Norwegian Government submits that the referring body does not fulfil the requirement of independence necessary for the purposes of Article 34 SCA. Admitting the present case would be contrary to the principle of homogeneity, as the Court of Justice of the European Union (“ECJ”) dismissed a reference by a similar appeal board in TDC (C-222/13, EU:C:2014:2265). The same reasoning was more recently applied in MT Højgaard and Züblin (C-396/14, EU:C:2016:347). Furthermore, it is not necessary to declare the request admissible since it is, in any event, likely that the case will be heard by an ordinary Norwegian court, which would then be entitled to make a reference to the Court. Finally, the Norwegian Government contends that the various administrative appeal boards in Norway generally lack the requisite skill, knowledge and practice necessary for the concise formulation of a reference, as they do not receive the same training as courts in this regard.

FindingsPage
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of the Court

35 The Court recalls that it has repeatedly ruled on the issue of admissibility of cases referred to it by public bodies. Specifically, the Court has found the following entities to constitute a court or tribunal for the purposes of Article 34 SCA: the Appeals Committee at the Finnish Board of Customs (Tullilautakunta) (Case E-1/94 Restamark [1994-1995] EFTA Ct. Rep. 15); the Norwegian Market Council (Markedsrådet) (Joined Cases E-8/94 and E-9/94 Mattel and Lego [1994-1995] EFTA Ct. Rep. 113 and Case E-4/04 Pedicel [2005] EFTA Ct. Rep. 1); the Norwegian Appeal Board for Health Personnel (Statens helsepersonellnemnd) (Case E-1/11 Dr. A [2011] EFTA Ct. Rep. 484); the Liechtenstein Appeals Board of the Financial Market Authority (Beschwerdekommission der Finanzmarktaufsicht) (Case E-4/09 Inconsult [2009-2010] EFTA Ct. Rep. 86 and Joined Cases E-26/15 and E-27/15 Criminal Proceedings against B and B v Finanzmarktaufsicht, judgment of 3 August 2016, not yet reported); and the Norwegian Tax Appeals Board for the Central Tax Office for Large Enterprises (Skatteklagenemnda ved Sentralskattekontoret for storbedrifter) (Joined Cases E-3/13 and E-20/13 Olsen and Others [2014] EFTA Ct. Rep. 400). In all of these cases, except with regard to the Markedsrådet and the Beschwerdekommission der Finanzmarktaufsicht, the Norwegian Government argued that the bodies in question did not constitute a court or tribunal within the meaning of Article 34 SCA and that the Court should therefore dismiss the requests.

36 The notion of court or tribunal in Article 34 SCA must be given an autonomous interpretation. It cannot be decisive how the body is defined under national law (see Restamark, cited above, paragraph 24). The purpose of Article 34 SCA is to establish cooperation between the Court and national courts and tribunals. The procedure is, in particular, a means of ensuring the homogenous interpretation of EEA law. It is established so as to provide assistance toPage
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the courts and tribunals in the EFTA States in cases in which they have to apply provisions of EEA law. The Court has repeatedly held that the purpose of Article 34 SCA does not require a strict interpretation of the notion of court or tribunal (see, for example, Dr. A, cited above, paragraph 34, and Olsen and Others, cited above, paragraph 59 and case law cited).

37 The principle of homogeneity is intended to ensure equal conditions of competition and respect of the same rules in the EEA. This is important when EEA rules are identical in substance to EU rules. The Court has, as a matter of principle, also recognised the concept of procedural homogeneity (see Case E14/11 DB Schenker v ESA [2012] EFTA Ct. Rep. 1178, paragraph 77 and case law cited). The reasoning which has led the ECJ to its interpretations of the term court or tribunal is relevant, although the Court is not required by Article 3 SCA to follow that reasoning when interpreting the main part of the SCA (see Restamark, cited above, paragraph 24).

38 When assessing whether a body is to be qualified as a court or tribunal under Article 34 SCA the Court takes account of a number of factors. Such elements can also be found in the case law of the ECJ when that court considers the admissibility of a request for preliminary ruling under Article 267 TFEU (compare, for example, TDC, cited above, paragraph 27). These include, in particular, whether the referring body is established by law, has a permanent existence, exercises binding jurisdiction, applies the rule of law and is independent, and, as the case may be, whether its procedure is inter partes and similar to a court procedure (see, inter alia, Fred. Olsen and Others, cited above, paragraph 60 and case law cited).

39 Thus,Page
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elements, such as the lack of rules on dismissal of the members comparable to those applicable to judges, which have been relied on by the Norwegian Government, are just one part of the overall examination of the factors characterising the independence of the referring body. The rules relating to the referring body must be considered as a whole in order to determine if that body fulfils the necessary prerequisites to be considered independent.

40 In the present case, the Board of Appeal fulfils to a sufficient degree the factors established in the Court’s case law. It is established by law, has a permanent existence, exercises binding jurisdiction and applies the rule of law. On the question of its independence, the Court observes that the chair and the deputy chair qualify as judges and have permanent positions. The rules of administrative and employment law against unlawful dismissal protect all of the members. Finally, in the assessment of complaints, the Board of Appeal cannot be given instructions. It is therefore independent.

41 The argument that the present case is likely to come before an ordinary Norwegian court that could, in any event, make a reference to the Court cannot of itself be decisive for the assessment of admissibility. Furthermore, it appears that the matter would not proceed if the Board of Appeal upholds the present complaint or Oslo Municipality decides not to pursue the matter any further. In any event, a finding that the case is admissible does not prevent a national court from referring further questions under the procedure of Article 34 SCA at a later stage, should that need arise.

42 As regards the assertion that public bodies, such as the Board of Appeal, do not have the necessary knowledge required for the concise formulation of a reference, the Court notes that this point is not pertinent for the determination of whether the referring body is aPage
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court or tribunal within the meaning of Article 34 SCA. In the Court’s own experience, obstacles of this nature have not caused difficulties. Furthermore, the fact that there are different appeal boards in administrative law in Norway only suggests that each such board must be assessed individually, which is in accordance with the Court’s established approach.

43 The Court therefore holds that the Board of Appeal constitutes a court or tribunal within the meaning of Article 34 SCA. Thus, the request must be held admissible.

IV Answers of the Court

Introductory remarks

44 The grounds for refusal set out in Article 3(1)(b) to (f) of the Trade Mark Directive are essentially identical to the grounds of refusal referred to in Article 7(1)(b) to (f) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (“Old Trade Mark Regulation”). This latter instrument was replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). Thus, due account must be paid to the principles laid down in the case law of the ECJ and the General Court relating to those regulations, in addition to the relevant rulings on the Trade Mark Directive itself, when interpreting the Trade Mark Directive in the case at hand.

45 The various grounds for refusal listed in Article 3 of the Trade Mark Directive must be interpreted in light of the public interest underlying each of them (compare the judgment in Philips, C-299/99, EU:C:2002:377, paragraph 77 and case law cited).

QuestionsPage
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1 to 3

46 By its first question, the Board of Appeal asks if trade mark registration of works, for which the copyright protection period has expired, may, under certain circumstances, conflict with the prohibition in Article 3(1)(f) of the Directive on registering trade marks that are contrary to “public policy or accepted principles of morality”. If the first question is answered in the affirmative, the Board of Appeal seeks to ascertain, by its second and third questions, which criteria and circumstances may be relevant in refusing the registration of a trade mark in such a case. In particular, the Board of Appeal raises the question whether the fact that the work protected by copyright is well-known and has great cultural value has an impact on that assessment. It is appropriate to consider these three questions together.

Observations submitted to the Court

47 Oslo Municipality considers, with regard to the first question, that works of art may, in principle, be registered as trade marks. The case at issue concerns shapes that are unique and well suited to distinguish goods and services and all of the shapes have been exclusively connected to Oslo Municipality. Many of these shapes are well known and valuable, in particular, due to the efforts and investments made by Oslo Municipality. Further, the present case does not concern a trade mark that is claimed, in itself, to be “contrary to public policy”. It is merely the registration of the mark, leading to the exclusion from the public domain, which is allegedly contrary to “public policy”. However, the matter to be assessed must be the sign itself. Thus, protection afforded under the trade mark regime should be based on whether the shape is capable of distinguishingPage
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the goods and services of one undertaking from those of another, irrespective of whether those shapes are also pieces of art or any lapse of copyright protection has occurred.

48 As regards the second question, Oslo Municipality submits that an interpretation of Article 3(1)(f) of the Trade Mark Directive that takes account of whether the work of art is well-known and of great cultural value must be rejected. This would raise difficulties related to the assessment of the work’s fame.

49 On the third question, Oslo Municipality argues that the assessment pursuant to Article 3(1)(f) of the Trade Mark Directive should also take account of the underlying reasons for the cultural and commercial value of the work of art in question. Moreover, that assessment should also take into account whether the shape in question is merely known as a work of art or is considered an identity bearer of one trader.

50 As regards the first question, the Norwegian Government takes the view that a sign that consists of a work of art is not as such excluded from registration, nor is dual protection under copyright and trade mark law prohibited. A sign must fulfil, however, the requirements of Article 3(1) of the Trade Mark Directive, in particular, the requirement of distinctiveness. It may be in practice more difficult to substantiate a finding of distinctive character for certain categories of marks. This applies for known works of art, as the mark is likely to be perceived by consumers as the artwork, and not as an indication of commercial origin. Furthermore, the ground of refusal for shape marks provided for in Article 3(1)(e)(iii), which cannot be overcome by the mark acquiring distinctive character, may be of particular relevance for marks consisting of works of art. As regards Article 3(1)(f), the Norwegian Government submits that the rationale behind this provision is to preclude the registration of trade marks that would contravene basic principles and values of society or be perceived by the relevant public as going directly against the basic moralPage
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norms of society. The threshold for denying registration on the basis of Article 3(1)(f) is generally high. The mere fact that a trade mark consists of a work of art that is no longer protected by copyright does not suffice to invoke Article 3(1)(f).

51 On the second question, the Norwegian Government submits that the more renowned and culturally significant a work of art is, the greater the probability that the public would be offended by a trade mark registration representing a misappropriation of the work. This may be relevant for the assessment.

52 As regards the third question, the Norwegian Government considers that there are no factors other than the renown and cultural significance of the work mentioned in the request of relevance for the assessment. Furthermore, it would not be possible to provide an exhaustive list of other factors that could be relevant in any individual case, since each case must be assessed on its own merits.

53 Concerning the first question, ESA submits that the fact that the copyright protection period has expired cannot in itself lead to the conclusion that registration of the work at issue is precluded. However, not every work that has previously been protected by copyright can be registered as a trade mark as soon as the protection period has expired. The work must fulfil the criteria set out in Article 3 of the Trade Mark Directive, and in particular the criterion of distinctiveness. In addition, Article 3(1)(e)(iii) may be applicable to famous works of sculpture as their substantial value necessarily lies in the form itself. In the case at hand, it may be particularly difficult to establish distinctiveness, as well as an indication of commercial origin for some works.

54 ESAPage
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considers the applicable test for denying registration under Article 3(1)(f) of the Trade Mark Directive within its analysis of the third question. In this regard, it submits that for a trade mark to be contrary to this provision, it must be either contrary to public policy or clearly offensive to a reasonable consumer with average sensitivity.

55 On the second question, ESA maintains that the request does not identify any public policy reason why the registration of a well-known work or a work of great cultural value should be precluded. There appears also to be no provision of EEA law substantiating such a conclusion. The desire to ensure greatest possible public access to such work could serve as a public policy ground for refusing registration should the Court be minded to extend the public policy concept in the specific trade mark context. This would have to be limited to an assessment carried out on a case-by-case basis of the work’s cultural value. As regards “accepted principles of morality”, it is questionable whether the registration of a work of great cultural value would be able to offend the reasonable consumer of average sensitivity.

56 According to the Commission, the notions of “contrary to public policy” and “contrary to accepted principles of morality” in Article 3(1)(f) of the Trade Mark Directive must each be considered on their own merits. Registration of a trade mark may be considered “contrary to public policy” although the trade mark is not offensive on any moral ground as such. Such an interpretation allows for the consideration of a ground based on allowing the free use of any particular subject matter, and not the grant of an exclusive property right, or of a cultural ground particular to the Member State concerned.

57 InPage
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the Commission’s view, the mere fact that a mark consists of, or includes, an artistic work that is protected by copyright does not in itself justify a refusal. However, the effect of granting a trade mark right would, in certain circumstances, be to perpetuate exclusive rights over the work of art, which should normally be in the public domain and capable of being freely used by any person including any economic operator. To appropriate a work of art for an indefinite period through the registration of a trade mark contradicts the very purpose and logic of the time limits established for copyright. It would also grant the trade mark owner more extensive rights than those enjoyed by the author’s estate. Hence, once copyright protection of the work has expired, the work of art should be able to be freely used by any person.

58 The Commission argues further that the better known the work of art is, the more likely the author or artist will be known to the general public. In this case, the possibility cannot be excluded that registration as a trade mark could also be considered as the desecration of a work. Therefore, the cultural value of a well-known work of art may also be taken into account.

59 On the first three questions, the Czech Government argues that public policy grounds can only be relied on if there is a genuine and sufficiently serious threat to a fundamental interest of society and, moreover, those grounds must not only serve purely economic ends. As regards a famous piece of art forming part of the universal cultural heritage, there is a fundamental interest of society at stake, namely the interest of enabling access to these outstanding creations of the mind for everyone. This interest cannot be achieved if an individual can gain an exclusive right resulting from the registered mark.

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German Government contends that the decision whether a trade mark should be denied registration on the basis of Article 3(1)(f) of the Trade Mark Directive must always be made by reference to the goods and services for which the trade mark registration was sought, while also giving consideration to the public interest underlying this provision. The existence of copyright, or expired copyright, is not relevant for the assessment under Article 3(1)(f). Moreover, even if a trade mark contravenes a statutory provision, this only constitutes a violation of public policy if the provision in question actually serves to protect public policy. In the assessment whether a trade mark violates “accepted principles of morality” copyright plays no part. Thus, registering a work that previously enjoyed copyright protection as a trade mark cannot be regarded as a contravention of public policy or accepted principles of morality within the meaning of Article 3(1)(f).

61 The Government of the United Kingdom submits that Article 3(1)(f) of the Trade Mark Directive cannot be relied upon to prevent registration of the trade mark sought, if there is nothing inherently offensive or immoral encompassed in the mark in the form for which registration is sought. The notion of public policy should be applied restrictively. There are three situations that might trigger an application of Article 3(1)(f): first, trade marks with criminal connotations; second, those with offensive religious connotations; and third, those which are considered explicit or taboo. It is, furthermore, unnecessary to stretch the scope of Article 3(1)(f) in order to prevent the monopolisation of famous works of art from occurring. It is likely that famous cultural works will fail to satisfy the requirement of distinctiveness in Article 3(1)(b). Registration may also be denied under the “bad faith” provisions pursuant to Article 3(2)(d), if registration is sought merely to obtain a monopoly.

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of the Court

62 The protection of copyright and the protection of trade marks pursue different aims, apply under distinct legal conditions and entail different legal consequences. In particular, Article 2 of the Trade Mark Directive makes no distinction as to the legal nature of the sign of which a trade mark may consist. Thus, in principle, nothing prevents a sign from being protected under both trade mark and copyright law.

63 The legal regime affording protection of copyright serves, as can be inferred from recital 2 in the preamble to the Infosoc Directive, to stimulate the development and marketing of new products and services, as well as the creation and exploitation of their creative content. According to recital 4 in the preamble to that Directive, a high level of protection of intellectual property will foster substantial investments in creativity and innovation. According to recital 11 in the preamble to the Copyright Directive, the protection of copyright ensures the maintenance and development of creativity in the interest of authors, cultural industries, consumers and society as a whole.

64 In other words, copyright protection provides for an incentive to contribute to the enrichment of the economy and of society at large. The principle of a limited term of copyright protection is furthermore internationally recognised by a majority of countries, which have signed the Berne Convention of 1886.

65 The lapse of copyright protection also serves the principles of legal certainty and protection of legitimate expectations, by providing a pre-determined time frame after which anyone can draw from ideas and creative content of others without limitation. The considerations relating to the public domain also serve, to some extent, the general interest in protecting creations of the mind from commercial greed (comparePage
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the opinion of Advocate General Ruiz-Járabo Colomer in Picasso, C-361/04 P, EU:C:2005:531, point 69) and in ensuring the freedom of the arts.

66 The public domain entails the absence of individual protection for, or exclusive rights to, a work. Once communicated, creative content belongs, as a matter of principle, to the public domain. In other words, the fact that works are part of the public domain is not a consequence of the lapse of copyright protection. Rather, protection is the exception to the rule that creative content becomes part of the public domain once communicated.

67 The Court observes that the essential function of a trade mark is to guarantee the identity of the origin of the marked product to enable the consumer, without any possibility of confusion, to distinguish the product or service from others which have another origin (see Case E-3/02 Paranova [2003] EFTA Ct. Rep. 101, paragraph 36). Thus, the protection of trade marks ensures market transparency and assumes an essential role in a system of undistorted competition.

68 In order to attain these aims, it is essential that the term of protection for trade marks is, in principle, indefinite, provided that the mark is renewed every ten years. A temporal limitation would render it impossible for a consumer to rely on a trade mark as a source of origin as competitors could easily draw on the repute of the mark, established through the temporary exclusive link of an undertaking with its mark.

69 However, in light of the potentially everlasting exclusivity afforded to the proprietor of a trade mark, there are several conditions that must be fulfilled in order for the trade mark to be registered. Article 3(1) of the Trade Mark Directive lays down eight mandatory grounds for refusal of registration or declaration of invalidity. In the present case, NIPO has denied registration of several of the marks on the basis of them lacking distinctiveness (point (b)), being descriptivePage
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of the goods or services (point (c)) and consisting exclusively of the shape which gives substantial value to the goods (point (e)(iii)). With regard to some of the trade marks, registration was granted for certain types of goods and services. The Board of Appeal queries whether registration of the marks at issue may also be denied on the basis of public policy or accepted principles of morality (point (f)), referring to the fact that the marks incorporate well-known artworks for which the copyright protection has expired.

70 The protection afforded by a trade mark grants its proprietor the exclusive right to use it in the course of trade and, allows him, in certain circumstances, to prevent others from using the mark. Thus, a trade mark based entirely on copyright protected work carries a certain risk of monopolisation of the sign for a specific purpose, as it grants the mark’s proprietor such exclusivity and permanence of exploitation which not even the author of the work or his estate enjoyed (compare the opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark, cited above, point 52).

71 In addition to those mentioned above in paragraph 67, trade marks serve other functions, in particular that of guaranteeing the quality of goods or services in question and those of communication, investment protection and advertising. The proprietor of a mark is, under certain circumstances, even entitled to prohibit not only such use which is liable to have an adverse effect on the mark’s function of indicating origin, but also uses which are liable to have effects on one of the other functions (compare the judgment in Google France, C-236/08 to C-238/08, EU:C:2010:159, paragraphs 77 and 79; compare also the judgments in L’Oréal and Others, C-487/07, EU:C:2009:378; and Arsenal, C-206/01, EU:C:2002:651).

72 The interest in safeguarding the public domain, however, speaks in favour of the absence of individual protection for, or exclusive rights to, the artwork on which the mark is based.

73 ArticlePage
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 3(1)(b) to (e) of the Trade Mark Directive acknowledges a certain need to keep a trade mark available for general use (compare the opinion of Advocate General Ruiz-Járabo Colomer in Adidas, C-102/07, EU:C:2008:14, point 33 et seq.).

74 However, as regards Article 3(1)(b) and (c) of the Trade Mark Directive on the lack of distinctiveness and the descriptiveness of the sign, the Court notes that these initial obstacles for registration may subsequently be overcome. Indeed, Article 3(3) of the Trade Mark Directive provides that a sign may, through use, acquire the distinctive character that it initially lacked. Therefore, these provisions provide merely a basis on which to keep works in the public domain for a limited period.

75 The possibility of acquiring distinctiveness through use provided for in Article 3(3) of the Trade Mark Directive may lead undertakings, which seek to transfer the appeal of formerly copyright protected works to their goods or services, to try to appropriate the work through targeted marketing campaigns. In order to acquire distinctiveness, a strong link must be created between the work and the goods and services so that an averagely informed, reasonably aware and perceptive consumer would recognise the work not as an expression of the creativity of the author or as part of the public domain common to all mankind, but merely as an indication of commercial origin (compare the opinion of Advocate General Ruiz-Járabo Colomer in Picasso, cited above, point 69).

76 Furthermore, both the notions of distinctiveness and descriptiveness which underlie Article 3(1)(b) and (c) of the Trade Mark Directive must be assessed by reference to the goods and services in respect of which the application for trade mark registration has been made (compare the judgments in Audi v OHIM, C398/08 P, EU:C:2010:29, paragraph 34, and Trautwein v OHIM (representation of a horse), T-386/08,Page
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EU:T:2010:296, paragraph 28 and case law cited). Accordingly, a sign may be refused registration with regard to one category of goods or services, while being granted registration for another category.

77 As regards Article 3(1)(d) of the Trade Mark Directive, the Court notes that this provision overlaps to a certain extent with Article 3(1)(c) (compare the judgment in Merz and Krell (Bravo), C-517/99, EU:C:2001:510, paragraph 35). For the former provision to apply, it must be demonstrated that the phrase concerned is commonly used in business communications and, in particular, in advertising (compare the judgment in OHIM v Erpo Möbelwerk (Das Prinzip der Bequemlichkeit), C-64/02 P, EU:C:2004:645, paragraph 38). There may be doubts whether an application for a trade mark registration for the art works at issue would qualify for assessment under this provision. However, even if the application were to fall within its scope, a sign initially refused under this provision may also acquire distinctiveness in accordance with Article 3(3).

78 Consequently, points (b) to (d) of Article 3(1) of the Trade Mark Directive do not ensure that a particular sign is, in general, kept free for use. Thus, these provisions do not guarantee that the work remains within the public domain.

79 As regards Article 3(1)(e) of the Trade Mark Directive, it is clear that this ground for refusal cannot be overcome by acquired distinctiveness (compare the judgment in Philips, cited above, paragraph 57). Moreover, the public interest underlying Article 3(1)(e) is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the legislature has sought to make subject to limited periods (compare the judgment in Bang & Olufsen v OHIM (representation of a speaker), T-508/08, EU:T:2011:575, paragraph 65).

80 ThePage
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rationale for the grounds of refusal embodied in points (i) to (iii) of Article 3(1)(e) of the Trade Mark Directive is to prevent trade mark protection from granting its proprietor a monopoly over characteristics of a product which a user is likely to seek in the products of competitors (compare the judgment in Philips, cited above, paragraph 78). Thus, it overwhelmingly seeks to protect competition (compare the opinion of Advocate General Mengozzi in Lego Juris v OHIM, C48/09 P, EU:C:2010:41, point 74).

81 An assessment of whether a sign consists exclusively of the shapes listed in points (i) to (iii) of Article 3(1)(e) of the Trade Mark Directive is carried out in relation to the classes of goods for which registration is applied. Consequently, Article 3(1)(e) will, for example, prevent an undertaking from monopolising reproductions of the works. However, if the sign is applied for in relation to a class of goods unrelated to its initial context, Article 3(1)(e) may not apply. Furthermore, according to its wording, Article 3(1)(e) does not apply to signs for which registration is sought in respect of services. Thus, this provision also does not ensure that works, in general, are kept within the public domain.

82 In comparison, the denial of registration of a trade mark provided for in Article 3(1)(f) of the Trade Mark Directive is irrespective of the classes of goods and services in relation to which the sign is used (compare, by analogy, the judgment in PAKI Logistics v OHIM, T-526/09, EU:T:2011:564, paragraph 18) and cannot be overcome by acquired distinctiveness.

83 The public interest underlying the mandatory ground for refusal laid down in Article 3(1)(f) of the Trade Mark Directive is to ensure that signs that are contrary to public policy or to accepted principles of morality are not registered.

84 ItPage
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is evident from the wording of Article 3(1)(f) of the Trade Mark Directive that this provision covers two alternatives, which may each serve as a ground for refusal. Namely, it refers to trade marks that are contrary to public policy or such trade marks that are contrary to accepted principles of morality.

85 The Court notes that, whilst these two limbs may in certain cases overlap (compare, inter alia, the judgment in Couture Tech v OHIM, T232/10, EU:T:2011:498), it is possible to consider each on its own merits.

86 In this regard, refusal based on grounds of “public policy” must be based on an assessment of objective criteria whereas an objection to a trade mark based on “accepted principles of morality” concerns an assessment of subjective values.

87 In the present case, the question seems to be whether a removal from the public domain of the signs and the artworks at issue – which would be the necessary consequence of a registration – may be contrary to public policy or to accepted principles of morality.

88 In this regard, the Court notes, at the outset, that according to Article 4(4)(c)(iii) of the Trade Mark Directive, EEA States may lay down rules in national law to refuse trade mark registration to the extent that the use of the trade mark may be prohibited by virtue of a copyright. However, as in the present case, the fact that an artwork has previously enjoyed copyright protection may not in itself form the basis for refusing trade mark registration.

89 As far as the question relates to refusal of registration on the basis that the sign is contrary to accepted principles of morality, the Court notes that the subjective values, which are relevant for the assessment of this ground of refusal, are determined by reference to the perception of the sign by the relevant public (compare the judgmentPage
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in Cortés del Valle López v OHIM (¡Que buenu ye! HIJOPUTA), T-417/10, EU:T:2012:120, paragraph 12). The perception of whether a mark is contrary to accepted principles of morality is influenced by the circumstances of the particular EEA State in which the consumers who form part of the relevant public are found (compare the judgment in Couture Tech v OHIM, cited above, paragraph 33).

90 The corresponding provision in Article 7(1)(f) of the Old Trade Mark Regulation has been applied to signs that in and of themselves are considered offensive by reasonable consumers with average sensitivity and tolerance thresholds (compare, for example, the judgments in PAKI Logistics v OHIM, cited above, paragraph 12, Cortés del Valle López v OHIM, cited above, paragraph 21, and Efag Trade Mark Company v OHIM, T-52/13, EU:T:2013:596, paragraph 18).

91 The signs at issue do not appear to be offending by their nature a reasonable consumer with average sensitivity and tolerance thresholds.

92 However, certain pieces of art may enjoy a particular status as prominent parts of a nation’s cultural heritage, an emblem of sovereignty or of the nation’s foundations and values. A trade mark registration may even be considered a misappropriation or a desecration of the artist’s work, in particular if it is granted for goods or services that contradict the values of the artist or the message communicated through the artwork in question. Therefore, the possibility cannot be ruled out that trade mark registration of an artwork may be perceived by the average consumer in the EEA State in question as offensive and therefore as contrary to accepted principles of morality.

93 Consequently,Page
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the assessment of whether trade mark registration of a sign that consists of an artwork would be contrary to accepted principles of morality must be carried out on a case-by-case basis. This assessment must take into account the status or perception of the artwork in the relevant EEA State and, where relevant, the nature of the goods or services for which registration as a trade mark has been applied, such that registration must be refused if the work is being misappropriated. It may also be necessary to consider the extent to which the sign contains elements, which may lead to a desecration of the work.

94 As regards the second alternative of Article 3(1)(f) of the Trade Mark Directive, which concerns signs that must be refused registration when they are contrary to public policy, the notion of “public policy” refers to principles and standards regarded to be of a fundamental concern to the State and the whole of society.

95 As the circumstances justifying the recourse to public policy can vary from one EEA State to another and from one time to another, it is necessary to grant the competent national authorities some discretion within the limits imposed by the EEA Agreement (compare the judgment in R v Bouchereau, 30/77, EU:C:1977:172, paragraph 34). In that regard, the Court recalls that according to established case law, grounds of public policy, such as the exception provided for in Article 3(1)(f) of the Trade Mark Directive, may only be relied on if there is a genuine and sufficiently serious threat to a fundamental interest of society (Case E-12/10 ESA v Iceland [2011] EFTA Ct. Rep. 117, paragraph 56 and case law cited).

96 Accordingly, registration of a sign as a trade mark may only be refused as contrary to public policy in accordance with Article 3(1)(f) of the Trade Mark Directive in exceptional circumstances. An artwork may be refused registration, for example, under the circumstances that its registration is regarded as a genuine and seriousPage
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threat to certain fundamental values or where the need to safeguard the public domain, itself, is considered a fundamental interest of society. It is for the referring body to determine whether those requirements are met, in light of the relevant matters of fact and law.

97 The Court notes, however, that there would be no threat to the need to safeguard the public domain resulting from works that were primarily created to serve as signs to be registered as trade marks. The protection afforded to such signs under copyright law is merely incidental. In such circumstances, the purpose behind the sign’s creation is to indicate commercial origin only. The same may be true in cases where the rights to a work were sold for the mere purpose of serving as a trademark. In these instances, it would, in turn, be irreconcilable with the purpose of the Trade Mark Directive if a sign solely created or purchased in order to qualify for the protection afforded by the Trade Mark Directive were to be denied precisely that protection.

98 The same is true in the case of signs which, albeit based on a work pertaining to the public domain, contain additional elements that are likely to transform or diffuse the original work (compare the judgment in Couture Tech v OHIM, cited above, paragraph 65). For these additional elements to be relevant, the sign must depart significantly from the original creative content such as to avoid confusion between the sign and the work in the eyes of an averagely informed, reasonably aware and perceptive consumer.

99 Furthermore, no threat exists to the need to safeguard the public domain if a sign consisting of an artwork can be refused registration on other grounds included in the Trade Mark Directive.

100 Accordingly,Page
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registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of the Trade Mark Directive if the sign consists exclusively of a work pertaining to the public domain and the registration of this sign constitutes a genuine and sufficiently serious threat to a fundamental interest of society.

101 Finally, and for the sake of completeness, the Court recalls that refusal of registration of a trade mark does not prevent an applicant from using the sign in question in the course of trade (compare the judgment in Efag Trade Mark Company v OHIM, cited above, paragraph 44 and case law cited). Also, there is, in principle, a limitless pool of potential signs on which an applicant can freely draw (compare the opinion of Advocate General Szpunar in Hauck, C205/13, EU:C:2014:322, point 31).

102 In light of the above, the answer to the first three questions is that the registration of a sign that consists of works for which the copyright protection period has expired as a trade mark is not in itself contrary to public policy or accepted principles of morality within the meaning of Article 3(1)(f) of the Trade Mark Directive. Whether registration for signs, that consist of works of art, as a trade mark shall be refused on the basis of accepted principles of morality, under Article 3(1)(f) of the Trade Mark Directive, depends in particular, on the status or perception of the artwork in the relevant EEA State. The risk of misappropriation or desecration of a work may be relevant in this assessment. Registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of the Trade Mark Directive if the sign consists exclusively of a work pertaining to the public domain and if registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society.

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4

103 By its fourth question, the referring body seeks guidance on the interpretation of Article 3(1)(e)(iii) of the Trade Mark Directive according to which registration must be denied for signs which consist exclusively of the shape which gives substantial value to the goods.

Observations submitted to the Court

104 Oslo Municipality argues that neither the wording nor the history of Article 3(1)(e)(iii) of the Trade Mark Directive supports an interpretation of that provision that covers not only three-dimensional shapes but also images of shapes.

105 The Norwegian Government takes the view that two-dimensional marks that exclusively give faithful and naturalistic depictions of a shape relevant to the shape of the goods should be assessed in the same manner as three-dimensional marks reproducing such shape.

106 ESA contends that Article 3(1)(e)(iii) of the Trade Mark Directive applies to two-dimensional and three-dimensional representations of goods such as sculptures, as in certain cases they may consist exclusively of the shape which gives substantial value to the goods.

107 The Commission submits that the reference to “shape” in Article 3(1)(e)(iii) of the Trade Mark Directive cannot be construed as meaning that the two-dimensional representation of an object, including a sculpture, would necessarily fall outside the scope of application of that provision. The “shape of goods” refers to their outward appearance and not necessarily to their volume. A two-dimensional sign may therefore represent the “shape” of a product. Thus, Article 3(1)(e)(iii) must be interpreted as applying also to two-dimensional representations of objects, such as sculptures.

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Czech Government argues that a trade mark which is a two-dimensional representation of a sculpture can hardly serve to identify the goods or services covered by that trade mark, as required by Article 3(1)(b) of the Trade Mark Directive. It is more likely that the relevant group of consumers would be tempted to consider the trade mark on the products only as a reproduction of the relevant piece of art. Therefore, the requirement of distinctiveness, as specified in Article 3(1)(b) in conjunction with Article 3(1)(e)(iii), is in relation to sculptures not fulfilled.

109 The Government of the United Kingdom submits that Article 3(1)(e) of the Trade Mark Directive is applicable to two-dimensional representations of sculptures, provided that the shape depicted in the representation gives substantial value to the goods.

Findings of the Court

110 Under Article 3(1)(e) of the Trade Mark Directive, signs consisting exclusively of the shape which results from the nature of the goods themselves, or the shape necessary to obtain a technical result, or the shape which gives substantial value to the goods must not be registered.

111 Article 3(1)(e) of the Trade Mark Directive constitutes a preliminary obstacle liable to prevent a sign consisting exclusively of a product from being registrable. The result is that if any one of the criteria listed in Article 3(1)(e) is satisfied, a sign consisting exclusively of the shape of the product cannot be registered as a trade mark (compare the judgment in Bennetton, C-371/06, EU:C:2007:542, paragraph 26 and case law cited).

112 Article 3(1)(e) of the Trade Mark Directive does not define the signs which must be considered as shapes within the meaning of that provision. It makes no distinction between three-dimensional shapes, two-dimensional shapes or two-dimensional representations ofPage
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three-dimensional shapes (compare the judgment in Yoshida Metal v OHIM, T-331/10 RENV and T-416/10 RENV, EU:T:2015:302, paragraph 36). Accordingly, the provision may apply also to two-dimensional representations of three-dimensional shapes.

113 Furthermore, the Court recalls that a particular design may be an essential element of branding which increases the appeal of the product at issue, that is to say, its value (compare the judgment in Bang & Olufsen v OHIM, cited above, paragraph 74).

114 Finally, it is important to bear in mind that, in the context of an application for the registration of a sign consisting exclusively of the shape of goods, it must first be ascertained that there is no obstacle under Article 3(1)(e) of the Trade Mark Directive which may preclude registration, before going on to analyse, as appropriate, whether the sign at issue may have acquired distinctive character within the meaning of Article 3(3) (compare the judgment in Société des Produits Nestlé (Kit Kat), C-215/14, EU:C:2015:604, paragraph 40).

115 In answer to the fourth question referred, the Court finds that Article 3(1)(e)(iii) of the Trade Mark Directive may apply to two-dimensional representations of three-dimensional shapes, including sculptures.

Question 5

116 By its fifth question, the referring body seeks clarification on the interpretation of Article 3(1)(c) of the Trade Mark Directive, which provides for a ground of refusal if the sign is descriptive.

ObservationsPage
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submitted to the Court

117 Oslo Municipality contends that a refusal to register a trade mark pursuant to Article 3(1)(c) of the Trade Mark Directive cannot be based on the mere fact that the mark in question is shaped as a product covered by the classes in respect of which the application is made. Consequently, a refusal to register trade marks shaped as products covered by the classes for which the application is made may only be based on Article 3(1)(c) where the shape in question does not significantly depart from the norm or customs of the business sector concerned.

118 The Norwegian Government submits that the public interest underlying Article 3(1)(b) and (c) of the Trade Mark Directive is to preclude signs that are not capable of fulfilling the function of origin. These provisions thereby prevent signs from being registered as trade marks which are descriptive for characteristics of the goods or services, and signs that should be kept free for all traders to use. As is the case under Article 3(1)(b) and Article 3(1)(e)(iii), the assessment under Article 3(1)(c) must be the same whether the mark is in two-dimensional or three-dimensional form.

119 ESA submits that Article 3(1)(c) of the Trade Mark Directive applies to two-dimensional and three-dimensional representations of goods such as sculptures, as in certain cases they are merely descriptive of the goods or services provided.

120 The Commission submits that, in principle, a work of art does not convey direct and concrete messages, as, by its very nature, art is open to subjective interpretation. A work of art is also by its nature disconnected from products or services for which it may serve in trade within the meaning of Article 3(1)(c) of the Trade Mark Directive. A trade mark consisting of, or including, the two-dimensional representation of a sculpture could be descriptive in respectPage
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of any good or service which has, or would be expected by the public to have, the sculpture or its author as a main object.

121 The Czech Government argues that a sculpture, as a unique result of an artist’s creativity, can never be considered a descriptive sign as specified in Article 3(1)(c) of the Trade Mark Directive.

122 The Government of the United Kingdom submits that the rationale for refusing to register a trade mark in accordance with Article 3(1)(c) of the Trade Mark Directive is that descriptive signs should be available to all traders, unless the mark has acquired distinctiveness. Thus, Article 3(1)(c) may be applicable to a shape mark that is a two-dimensional representation of the shape or appearance of the goods. The shape of a product is capable of performing a descriptive function where the shape is descriptive of a characteristic of the goods.

Findings of the Court

123 The signs and indications referred to in Article 3(1)(c) of the Trade Mark Directive are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (compare the judgment in Naipes Heraclio Fournier v OHIM (representation of a sword), T-160/02 to T-162/02, EU:T:2005:167, paragraph 40 and case law cited).

124 Accordingly,Page
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for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive, without further thought, a description of the goods and services in question or one of their characteristics (compare the judgment in Metso Paper Automation v OHIM (PAPERLAB), T-19/04, EU:T:2005:247, paragraph 25 and case law cited).

125 It is further evident that, with the exception of Article 3(1)(e) of the Trade Mark Directive, the provisions of Article 3(1), such as point (c), make no explicit distinction between different categories of trade mark (compare the judgment in Apple (representation, by a design, of the layout of a retail store), C-421/13, EU:C:2014:2070, paragraph 24).

126 Consequently, the reference to trade marks which consists exclusively of signs or indications which may serve to designate characteristics of the goods or service other than those expressly referred to in Article 3(1)(c) of the Trade Mark Directive is sufficiently broad to cover a wider variety of trade marks, including a three-dimensional trade mark consisting of the shape of a product or a two-dimensional representation thereof (compare the judgment in Linde and Others, C-53/01 to C-55/01, EU:C:2003:206, paragraph 69).

127 Thus, in answer to the fifth question referred, the Court finds that Article 3(1)(c) of the Trade Mark Directive must be interpreted as being applicable to two-dimensional and three-dimensional representations of the shape of goods.

Question 6

128 By its sixth question, the referring body asks, in essence, which criteria are relevant under Article 3(1)(b) and (c) of the Trade Mark Directive in the assessment of an application to register a trade mark.

ObservationsPage
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submitted to the Court

129 Oslo Municipality contends that the grounds for refusal specified in Article 3(1)(b) and (c) of the Trade Mark Directive should be reserved for common shapes that do not depart significantly from the norm or customs of the business sector concerned, for example a heart shape for jewellery.

130 The Norwegian Government maintains that the shape or appearance of a mark must depart significantly from the norms and customs in the sector to fulfil the requirement for a distinctive character. The average consumer is not used to drawing conclusions on the origin of products based on their shape. The requirement that the mark “departs significantly from the norms and customs” is only an interpretation of the requirement of distinctiveness applied to certain types of marks. This requirement will not be of much guidance in the assessment of distinctiveness as regards marks consisting of works of art, as there are no relevant norms or customs for comparison. Instead, by virtue of Article 3(1)(c) of the Trade Mark Directive, it must be assessed whether the shape indicated by the mark is descriptive for characteristics of the goods and services.

131 According to ESA, both points (b) and (c) of Article 3(1) of the Trade Mark Directive are applicable to signs that consist of two-dimensional and three-dimensional representations of the shape or appearance of the goods. Therefore, both the distinctiveness of the sign pursuant to Article 3(1)(b) and the descriptiveness of the sign pursuant to Article 3(1)(c) have to be examined before a sign can be registered as a trade mark.

132 The Commission limits its assessment, in light of its observations made with regard to the fifth question, to Article 3(1)(b) of the Trade Mark Directive. In the case at hand, a relevant factor is whether the characteristics of a sign are, in the public’s perception, purely attributable to the ornamental and decorative nature of the goods, ratherPage
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than indicating the commercial origin of these goods. If this is the case, the sign is devoid of any distinctive character and falls within Article 3(1)(b).

133 The Czech Government considers that, in light of the answers proposed to the previous questions, it is not necessary to provide an answer to the sixth question.

134 The Government of the United Kingdom submits that in relation to particular artistic articles, such as sculptures, shapes necessarily vary a great deal as a result of their artistic purpose. As a consequence, it is more difficult to show that any particular shape is outside the norms and customs of that particular sector. A mark may also, or alternatively, be refused under Article 3(1)(c) of the Trade Mark Directive if it is descriptive.

Findings of the Court

135 The Court notes that the assessment criterion of whether “the design in question departs significantly from the norm or customs of the business sector”, referred to in the Board of Appeal’s sixth question, relates to an assessment under Article 3(1)(b) of the Trade Mark Directive (compare the judgment in Louis Vuitton Malletier v OHIM (representation of a lock), C-97/12 P, EU:C:2014:324, paragraph 52 and case law cited).

136 However, a mark which is descriptive of characteristics of goods or services for the purposes of Article 3(1)(c) of the Trade Mark Directive is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 3(1)(b) (compare the judgment in Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 86).

137 InPage
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addition to what has been stated above on the fifth question, the Court recalls that a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the relevant public (compare the judgment in JanSport Apparel v OHIM (BUILT TO RESIST), T-80/07, EU:T:2009:332, paragraph 21 and case law cited).

138 As such, an assessment that the mark is not to be considered descriptive under Article 3(1)(c) of the Trade Mark Directive does not prevent that mark from being assessed under Article 3(1)(b), for it may still lack distinctiveness under that provision (compare the judgment in Koninklijke KPN Nederland, cited above, paragraph 86).

139 In this regard, the distinctive character of a mark must be, according to established case law, assessed in relation, on the one hand, to the goods and services covered by that mark and, on the other, to the presumed expectations of the relevant class of persons, that is to say, an average consumer of the category of goods and services in question who is reasonably well-informed, observant and circumspect.

140 It is for the Board of Appeal, in applying Article 3(1)(b) and (c) of the Trade Mark Directive, to determine, according to established case law and in particular with reference to the public interest underlying these provisions, whether the ground for refusing registration in one of these provisions applies to the case at hand (compare the judgment in Linde and Others, cited above, paragraph 75).

141 Thus, in answer to the sixth question referred, the Court finds that Article 3(1)(b) of the Trade Mark Directive must be interpreted as meaning that where a sign is descriptive within the meaning Article 3(1)(c), that sign necessarily lacks distinctiveness under Article 3(1)(b). Should the referring body find that the sign at issue is not descriptive, it may assess its distinctiveness for the purpose of ArticlePage
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 3(1)(b) in relation to the goods and services covered by that mark and to the presumed expectations of an average consumer of the category of goods and services in question, who is reasonably well-informed, observant and circumspect.

V Costs

142 The costs incurred by the Norwegian Government, ESA, the Commission, the German Government, the Czech Government and the United Kingdom Government, which have submitted observations to the Court, are not recoverable. Since these proceedings are a step in the proceedings pending before the national court, any decision on costs in those proceedings is a matter for that court.

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those grounds,

The Court

In answer to the questions referred to it by the Norwegian Board of Appeal for Industrial Property Rights hereby gives the following Advisory Opinion:

1. The registration as a trade mark of a sign which consists of works for which the copyright protection period has expired, is not in itself contrary to public policy or accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC.

2. Whether registration for signs that consist of works of art as a trade mark shall be refused on the basis of accepted principles of morality within the meaning of Article 3(1)(f) of Directive 2008/95/EC depends, in particular, on the status or perception of the artwork in the relevant EEA State. The risk of misappropriation or desecration of a work may be relevant in this assessment.

3. Registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of Directive 2008/95/EC, if the sign consists exclusively of a work pertaining to the public domain and registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society.

4. Article 3(1)(e)(iii) of Directive 2008/95/EC may apply to two-dimensional representations of three-dimensional shapes, including sculptures.

5. Article 3(1)(c) of Directive 2008/95/EC must be interpreted as being applicable to two-dimensional and three-dimensional representations of the shape of a good.

6. ArticlePage
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 3(1)(b) of Directive 2008/95/EC must be interpreted as meaning that where a sign is descriptive within the meaning of Article 3(1)(c), that sign necessarily lacks distinctiveness under Article 3(1)(b). Should the referring body find that the sign at issue is not descriptive, it may assess its distinctiveness for the purposes of Article 3(1)(b) in relation to the goods and services covered by that mark and to the presumed expectations of an average consumer of the category of goods and services in question, who is reasonably well-informed, observant and circumspect.

Carl Baudenbacher

Per Christiansen

Páll Hreinsson

Delivered in open court in Luxembourg on
6 April 2017.

Gunnar Selvik
Registrar

Carl Baudenbacher
President

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for the Hearing

in Case E-5/16

REQUEST to the Court pursuant to Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice by the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter), in the case of

Municipality of Oslo (Oslo kommune)

concerning the interpretation of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, and in particular Article 3(1)(b) to (f) thereof.

I Introduction

1 By a letter dated 22 March 2016, registered at the Court as Case E-5/16 on 31 March 2016, the Norwegian Board of Appeal for Industrial Property Rights (Klagenemnda for industrielle rettigheter; “The Board of Appeal”) requested an Advisory Opinion in the case pending before it.

2 The case before the Board of Appeal concerns an appeal from the Municipality of Oslo (“the Municipality”) against a decision by the Norwegian Industrial Property Office (“NIPO”) of 5 August 2014. By way of this decision, the NIPO rejected applications for trade marks consisting of or including works of art by the Norwegian sculptor Gustav Vigeland, such as the sculptures “The Angry Boy” (Sinnataggen) and “The Monolith” (Monolitten). The trade mark applications were submitted by the Municipality, which manages Vigeland’s rights.

II LegalPage
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background

EEA law

3 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25 and EEA Supplement 2011 No 40, p. 1 (Icelandic) and 2015 No 3, p. 342 (Norwegian)) (“the Directive”) was made part of the EEA Agreement by Joint Committee Decision No 146/2009 of 4 December 2009 (OJ 2010 L 62, p. 43, and EEA Supplement 2010 No 12, p. 42) (“Decision No 146/2009”). It is referred to at point 9h of Annex XVII (Intellectual Property) to the EEA Agreement. No constitutional requirements were indicated for the purpose of Article 103 of the EEA Agreement. Consequently, the decision entered into force on 5 December 2009, and the time limit for the EFTA States to implement the Directive expired on the same date.

4 According to point 9h of Annex XVII to the EEA Agreement, the provisions of the Directive shall, for the purposes of the EEA Agreement, be read with the following adaptations:

(a) in Article 3(2), the term “trade mark law” shall be understood to be the trade mark law applicable in a Contracting Party;

5 Recital 7 of the Directive reads:

This Directive should not exclude the application to trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer protection.

6 ArticlePage
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 2 of the Directive reads:

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

7 Article 3(1) of the Directive includes the following grounds for refusal or invalidity:

1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

(e) signs which consist exclusively of:

(i) the shape which results from the nature of the goods themselves;

(ii) the shape of goods which is necessary to obtain a technical result;

(iii) the shape which gives substantial value to the goods;

(f) trade marks which are contrary to public policy or to accepted principles of morality;

8 ArticlePage
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 3(2) of the Directive reads, in extract, as follows:

2. Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that:

(a) the use of that trade mark may be prohibited pursuant to provisions of law other than trade mark law of the Member State concerned or of the Community;

(d) the application for registration of the trade mark was made in bad faith by the applicant.

9 Article 3(3) of the Directive reads as follows:

3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.

10 Article 4(4)(c)(iii) of the Directive reads as follows:

4. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(c) thePage
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use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (b) of this paragraph and in particular:

(iii) a copyright;

11 Directive 2006/116/EC of the European Parliament and the Council of 12 December 2006 on the term of protection of copyright and certain related rights (OJ 2006 L 372, p. 12 and EEA Supplement 2009 No 25, p. 278 (Icelandic) and 2010 No 38, p. 150 (Norwegian)) was made part of the EEA Agreement by Joint Committee Decision No 56/2007 of 8 June 2007 (OJ 2007 L 266, p. 17, and EEA Supplement 2007 No 48, p. 13), and is referred to at point 9f of Annex XVII (Intellectual Property) to the EEA Agreement. No constitutional requirements were indicated for the purpose of Article 103 of the EEA Agreement. Consequently, the decision entered into force on 9 June 2007, and the time limit for the EFTA States to implement the Directive expired on the same date.

12 Article 1(1) of Directive 2006/116/EC reads as follows:

1. The rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public.

NationalPage
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law1

1 Translations of national provisions are unofficial.

13 The Directive was implemented in Norway by Act No 8 of 26 March 2010 on protection of trademarks (the Trade Marks Act) and Regulation of 25 June 2010 No 937 (the Trade Marks Regulation).

14 Section 2 second paragraph of the Trade Marks Act reads:

Trademark rights may not be attained for signs that consist exclusively of a shape that results from the nature of the goods themselves, is necessary to obtain a technical result or adds substantial value to the goods.

15 Section 14 first paragraph second sentence reads:

[In order to be registered, a trademark] must have a distinctive character as a token for the kind of goods or services it represents.

16 Section 14 second paragraph (a) of the Trade Marks Act reads:

A trademark may not be registered if it exclusively or subject to only minor changes or additions consists of signs or indications that serve to …

a) designate the kind, quality, quantity, purpose, value or geographical origin, … or other characteristics of the goods or services, …

17 Section 15 first paragraph (a) of the Trade Marks Act reads:

A trade mark cannot be registered if it:

a) is contrary to law, public order or accepted principles of morality;

III FactsPage
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and procedure

Background

18 In view of the actual or imminent lapse of intellectual property protection for copyright protected works by some Norwegian artists, the Municipality, which manages several of these rights, applied for trade mark protection of a number of artworks that will become freely available under the Norwegian Copyright Act. As regards the work of Gustav Vigeland, the Municipality applied for trade mark protection with regard to several artworks. The following works of art are mentioned in the request as examples:

19 “The Angry Boy” (Sinnataggen) by Gustav Vigeland:

The Angry Boy (Sinnataggen) by Gustav Vigeland

20 Cast iron gate by Gustav Vigeland:

Cast iron gate by Gustav Vigeland

21 SectionPage
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of cast iron gate by Gustav Vigeland:

Section of cast iron gate by Gustav Vigeland

22 The statute “Egil Skallagrimsson” by Gustav Vigeland:

The statute Egil Skallagrimsson by Gustav Vigeland

23 “The Monolith” (Monolitten) by Gustav Vigeland:

The Monolith (Monolitten) by Gustav Vigeland

24 APage
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sculpture by Gustav Vigeland:

A sculpture by Gustav Vigeland

The dispute before the Board of Appeal

25 In the case at hand, the Board of Appeal is called upon to decide on the appeals brought by the Municipality against NIPO’s refusal to register certain trade marks. The refusals to register the trade marks were based, respectively, on Section 14 first paragraph of the Trade Marks Act on lack of distinctive character, Section 14 second paragraph (a) of the Trade Marks Act on descriptive marks and Section 2 second paragraph third alternative of the Trade Marks Act on trade marks that consist of a shape that adds substantial value to the goods. With regard to some of the trade marks, registration was granted for certain types of goods and services.

26 The Board of Appeal takes the view that, in addition to the grounds considered by NIPO, other grounds may exist on which to refuse the registration of the trade marks. In particular, the Board of Appeal considers that the rule in Section 15 first paragraph (a) of the Trade Marks Act, which implements Article 3(1)(f) of the Directive, may be applicable.

27 ThePage
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Board of Appeal questions whether the decision of the German Federal Patent Court in the Mona Lisa case2 should set a precedent in European law. According to the Board of Appeal, if trademark protection of well-known works of art can only be refused on grounds of lack of distinctiveness, this leaves open the possibility for distinctiveness to be achieved through use thus qualifying the work for registration at a later stage. Consequently, any undertaking could, in principle, achieve trademark protection for copyright works that become freely available, regardless of the cultural value of such works.

2 Reference is made to the Decision of 25 November 1997 of the German Federal Patent Court (Bundespatentgericht) in Case 24 W (pat) 188/96, GRUR 1998, p. 1021 (“Mona Lisa”).

28 The Board of Appeal also refers to the Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark who found “it more difficult to accept … that a creation of the mind which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity which not even its author’s estate enjoys”.3 In this regard the Board of Appeal questions whether that view of Advocate General Ruiz-Járabo Colomer could have a bearing on the application of Article 3(1)(f) of the Directive.

3 Reference is made to Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark, C-283/01, EU:C:2003:197, point 52.

IV Questions

29 The following questions have been referred to the Court:

1. May trade mark registration of copyright works, for which the protection period has expired, under certain circumstances,Page
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conflict with the prohibition in Article 3(1)(f) of the Trade Marks Directive on registering trade marks that are contrary to ‘public policy or … accepted principles of morality’?

2. If Question 1 is answered in the affirmative, will it have an impact on the assessment that the copyright work is well-known and of great cultural value?

3. If Question 1 is answered in the affirmative, may factors or criteria other than those mentioned in Question 2 have a bearing on the assessment, and, if so, which ones?

4. Is Article 3(1)(e)(iii) of Directive 2008/95/EC applicable to two-dimensional representations of sculptures?

5. Is Article 3(1)(c) of Directive 2008/95/EC applicable as legal authority for refusing trade marks that are two or three-dimensional representations of the shape or appearance of the goods?

6. If Question 5 is answered in the affirmative, is Article 3(1)(b) and (c) of Directive 2008/95/EC to be understood to mean that the national registration authority, in assessing trade marks that consist of two or three-dimensional representations of the shape or appearance of the goods, must apply the assessment criterion of whether the design in question departs significantly from the norm or customs of the business sector, or may the grounds for refusal be that such a mark is descriptive of the shape or appearance of the goods?

V WrittenPage
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observations

30 Pursuant to Article 20 of the Statute of the Court and Article 97 of the Rules of Procedure, written observations have been received from:

the Municipality, represented by Felix Reimers and Vincent Tsang, advocates;

the Norwegian Government, represented Ida Thue, advocate, Office of the Attorney General (Civil Affairs), and Linn Edvartsen, Senior Adviser, Ministry of Foreign Affairs, acting as Agents;

the EFTA Surveillance Authority (“ESA”), represented by Carsten Zatschler, Øyvind Bø and Marlene Lie Hakkebo, members of its Department of Legal & Executive Affairs, acting as Agents;

the European Commission (the “Commission”), represented by Julie Samnadda and Tibor Scharf, members of its Legal Service, acting as Agents;

the German Government, represented by Thomas Henze and Mathias Hellman, acting as Agents;

the Czech Government, represented by Lucie Březinová and Jiří Vláčil, Ministry of Foreign Affairs, acting as Agents; and

the United Kingdom Government, represented by Julia Kraehling, Cabinet Office European Law Division, Treasury Solicitor’s Department, acting as Agent, and by Nicholas Thomas Saunders, Barrister.

VI SummaryPage
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of the arguments submitted and answers proposed

The Municipality

31 At the outset, the Municipality considers that works of art may, in principle, be registered as trade marks, whether or not their copyright protection has lapsed. The legal protection pursuant to the trade mark regime is different to that under the copyright regime and the lapse of protection of under one regime should not affect protection under the other.

32 The case at issue concerns shapes that are unique and well suited to distinguish goods and services of different commercial providers. All of the shapes have been exclusively connected to, and used by or through, the Municipality since the death of Gustav Vigeland in 1943. Many of these shapes are well known and valuable, in particular, due to the efforts and investments made by the Municipality.

33 With regard to the first question, the Municipality maintains that it follows from the wording of Article 3(1)(f) of the Directive that this provision seeks to prevent the registration of “trade marks which are contrary to public policy or to accepted principles of morality”. However, the present case does not concern a trade mark which is claimed in itself to be “contrary to public policy”. It is merely the registration of the trade mark which is allegedly contrary to “public policy”. An interpretation of Article 3(1)(f) of the Directive such as to encompass situations where it is not the shape and content of the mark that are contrary to public policy would expand the provision’s wordingPage
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and is not supported by its purpose. According to the Municipality, the matter for assessment must be “the sign itself”.4

4 Reference is made to the judgment in INTERTOPS, T-140/02, EU:T:2005:312, paragraphs 32 and 33; Office for Harmonization in the Internal Market (“OHIM”), Guidelines for Examination in the Office for Harmonization in the Internal Market, Part B, Section 4 on Absolute Grounds for Refusal; and Ulrika Wennersten, Immaterialrätt och skydd av samhällsideal (2014).

34 Moreover, the Municipality claims that an application of Article 3(1)(f) of the Directive that excludes copyright protected shapes from protection under the trade mark regime after the copyright protection has lapsed is inapplicable and also appears meaningless.5 Rather, in its view, protection afforded under the trade mark regime should be based on whether the shape is capable of distinguishing the goods and services of one undertaking from those of another, irrespective of whether the shapes are also pieces of art and any lapse of copyright protection.

5 Reference is made to Annette Kur, Too pretty to protect? Trade Mark Law and the Enigma of Aesthetic Functionality, Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 11-16.

35 As regards the second question, the Municipality rejects an application of Article 3(1)(f) of the Directive which excludes the possibility to obtain trade mark rights based on the fact that the work of art is well-known and of great cultural value. An application of that kind would raise difficulties related to the assessment of a work’s fame, including the grounds on which such an assessment is based and the assessment of how and when its fame was established.

36 Furthermore, the Municipality seeks to distinguish the case at hand from Shield Mark,6 as the present case concerns an entity specifically chosen by the artist, Gustav Vigeland, to administer and safeguard his artistic reputation and memory. It contends that the efforts of the Municipality have been a significant factor in ensuring that severalPage
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of the shapes covered by the trade mark applications in the present case are well known. The shapes in question are exclusively connected to the Municipality and there are no other entities that have justifiable interests in the commercial exploitation of these shapes. Therefore, according to the Municipality, the second question should be answered in the negative.

6 Reference is made to the Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark, cited above.

37 Turning to the third question, the Municipality submits that the assessment should also take account of the underlying reasons for the cultural and commercial value and fame of the work of art in question. Thus, it should be assessed whether the value and fame of the work are related to characteristics and qualities of the artwork alone, or if the value and renown may be attributed to investments and efforts made by the Municipality.

38 Furthermore, the Municipality submits that the assessment pursuant to Article 3(1)(f) of the Directive must also take into account whether the shape in question is merely known as a work of art or is considered an identity bearer of one trader. The latter makes it possible to distinguish goods and services from this trader in relation to those of other traders.

39 As regards the fourth question, the Municipality argues that neither the wording nor the history of Article 3(1)(e)(iii) of the Directive supports an interpretation of that provision that covers not only three-dimensional shapes but also images of shapes.

40 With regard to the fifth question, the Municipality contends that, pursuant to Article 2 of the Directive, the shape of a product is in principle eligible for registration as long as the shape is distinctive. Thus, a refusal to register a trade mark pursuant to Article 3(1)(c) of the Directive cannot be based on the mere fact that the trade mark in question is shaped as a product covered by the classes in respect of which the application is made. Consequently, a refusal to register trade marks shaped as products covered by the classes for which the applicationPage
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is made may only be based on Article 3(1)(c) of the Directive where the shape in question does not significantly depart from the norm or customs of the business sector concerned.

41 Turning to the sixth question, the Municipality contends that, pursuant to the wording of Article 2 of the Directive, the shape of a product is in principle eligible for registration as long as it is “capable of distinguishing the goods or services of one undertaking from those of other undertakings”.7 The grounds for refusal specified in Article 3(1)(b) and (c) of the Directive should be reserved for common shapes that do not depart significantly from the norm or customs of the business sector concerned, e.g. a heart shape for jewellery. In its view, the strict practice established by the Norwegian trade mark authorities contravenes Article 2 of the Directive.8

7 Reference is made to the judgment in Voss of Norway, C-445/13 P, EU:C:2015:303, paragraph 81 and the case law cited.

8 Reference is made to the OHIM Board of Appeal decision of 25 April 2016 in Case VM 15/112 (Legofigur (3D-merke)) and to the judgment in Best-Lock (Europe) Ltd v OHIM (Lego Juris), T395/14, EU:T:2015:380.

42 The Municipality does not propose any specific answers to the questions referred.

The Norwegian Government

Admissibility

43 The Norwegian Government submits that the questions from the Board of Appeal should be dismissed as inadmissible, as the Board of Appeal fails to meet the criteria for qualification as a “court or tribunal”Page
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for the purposes of Article 34 of the Agreement between the EFTA States on the Establishment of a Surveillance Authority and a Court of Justice (“SCA”), in particular, the criterion of “independence”.9

9 Reference is made to the judgments in RTL Belgium, C-517/09, EU:C:2010:821, paragraphs 37, 38 and 48; Torresi, C-58/13 and C-59/13, EU:C:2014:2088, paragraph 18; and Wilson, C-506/04, EU:C:2006:587, paragraphs 53 and 54; and the order in Pilato, C-109/07, EU:C:2008:274, paragraph 24.

44 The Norwegian Government submits that the president and vice president of the Board of Appeal are appointed by the King in the Council of State. The other members are appointed by the Ministry of Trade, Industry and Fisheries for a period of up to 5 years. It is possible to renew their term. The competence to dismiss the members of the Board of Appeal lies with the appointing authorities. There are no specific procedures for the dismissal of the members of the Board of Appeal, other than the general rules of administrative law and employment law, which apply in the event of an unlawful dismissal. Further, the Board of Appeal has the status of a defendant in the event of an appeal against its decision before the ordinary courts in Norway. Consequently, the Board of Appeal is in a comparable situation to the Teleklagenævnet, which the Court of Justice of the European Union (“ECJ”) considered to not fulfil the criterion of independence.10

10 Reference is made to the judgment in TDC A/S v Erhvervsstyrelsen (Teleklagenævnet), C222/13, EU:C:2014:2265, paragraphs 28 to 38.

45 As a result, the Government of Norway concludes that the Board of Appeal does not meet the criterion of independence, and that the Court does not have jurisdiction to answer the questions referred.

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questions referred to the Court

46 In the event that the Court concludes that the request is admissible, the Norwegian Government proposes the following answers to the questions referred.

47 With regard to the first question, the Government of Norway states that, under Article 2 of the Directive, any type of sign is in principle eligible for registration as a trade mark; hence, a sign that consists of a work of art is not as such excluded from registration. Further, dual protection under copyright and trade mark law is not prohibited.

48 A sign consisting of a work of art has to fulfil the general registration requirements in Article 3(1) of the Directive in order to be registered as a trade mark. A trade mark cannot be registered if it is devoid of any distinctive character (Article 3(1)(b) of the Directive) or if it consists exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or service (Article 3(1)(c) of the Directive). The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.11

11 Reference is made to the judgments in Canon, C-39/97, EU:C:1998:442, paragraph 28, and Philips, C-299/99, EU:C:2002:377, paragraph 30.

49 The Norwegian Government contends further that, although the requirements are the same, it may be more difficult to substantiate a finding of distinctive character for certain categories of marks, because consumers are not used to perceiving the sign in question as a trade mark.12 This applies for known works of art, as the mark is likelyPage
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to be perceived by consumers as the artwork, and not as an indication of commercial origin. The more renowned the artwork is, the more this reasoning applies.

12 Reference is made to judgments in Linde and Others, C-53/01 to C-55/01, EU:C:2003:206; and OHIM v Erpo Möbelwerk GmbH (Das Prinzip der Bequemlichkeit), C64/02 P, EU:C:2004:645, paragraph 34.

50 Moreover, the specific ground for refusal of shape marks specified in Article 3(1)(e)(iii) of the Directive may be of particular relevance for marks consisting of works of art. The Norwegian Government observes that, in contrast to the grounds specified in Article 3(1)(b) and (c) of the Directive, this ground for refusal cannot be overcome by the mark acquiring a distinctive character.13

13 Reference is made to the judgment in Benetton, C-371/06, EU:C:2007:542, paragraph 28.

51 In addition, the Norwegian Government argues that Article 3(1)(e)(iii) of the Directive excludes trade mark protection for marks consisting of the shape of products when that shape gives substantial aesthetic value to the goods.14 The shape and appearance of figurative works of art may give substantial aesthetic value to goods that can be shaped in the same way as the artwork, and registration as a trade mark may therefore be refused for such goods under Article 3(1)(e)(iii) of the Directive.

14 Reference is made to the judgment in Benetton, cited above.

52 The public interest underlying Article 3(1)(f) of the Directive is to ensure that signs are not registered which would, when used as a trade mark, be perceived by the relevant public as contrary to public policy or to accepted principles of morality.15 Thus, the rationale behind the provision is to preclude trade marks from registration which would contravene basic principles and values, such as human rights, or be perceived by the relevant public as going directly against the basic moral norms of society. The basic moral norms and perceptions of the particular country where the registration is soughtPage
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are relevant, and these perceptions may change over time. The national registration authorities and courts will have a certain margin of appreciation when applying the provision.

15 Reference is made to the judgment in Couture Tech, T-232/10, EU:T:2011:498, paragraphs 29 and 50.

53 Moreover, the Norwegian Government argues that the perception of the average consumer is relevant when carrying out the assessment pursuant to that provision.16 However, it is not necessary that the moral norms are widespread; basic moral norms considered important by a minority are also entitled to protection.17 The intrinsic qualities of the trade mark as such, in relation to the goods and services applied for, must be assessed when deciding whether the mark is contrary to public policy or to accepted principles of morality. By contrast, the conduct of the person applying for it, or whether the goods or services can be legally offered, is not relevant.18

16 Reference is made to judgments in Couture Tech, cited above, paragraph 51; PAKI Logistics, T526/09, EU:T:2011:564, paragraphs 12, 17 and 18; and Brainlab AG v OHIM (Curve), T266/13, EU:T:2014:836, paragraph 25.

17 Reference is made to the judgment in Couture Tech, cited above.

18 Reference is made to the judgment in INTERTOPS, cited above, paragraphs 27 and 33.

54 According to the Norwegian Government, the General Court has applied the bar on registration of marks contrary to public policy or accepted principles of morality to marks which would be perceived as “grievously offensive”.19 In their guidelines, the European Union Intellectual Property Office (“EUIPO”) has indicated that such a bar will be applied to deny registration of marks deemed to support terrorist groups or consist of Nazi symbols, as well as to exclude marks consisting of blasphemous, racist or discriminatory words and phrases.20

19 Reference is made to the judgments in PAKI Logistics, cited above, paragraph 12; Efag Trade Mark Company v OHIM, T-52/13, EU:T:2013:596; and Curve, cited above.

20 European Union Intellectual Property Office, Guidelines for examination of European Union trade marks (“EUIPO Guidelines”) Part B, Section 4, points 2.7.1. and 2.7.2.

55 Thus,Page
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the Norwegian Government submits that the threshold for denying registration on the basis of Article 3(1)(f) of the Directive is generally high. However, the possibility cannot be excluded that a misappropriation of a work of art may, under certain circumstances, be perceived as so offensive by the national public that Article 3(1)(f) of the Directive will apply.

56 However, the mere fact that a trade mark consists of a work of art which is no longer protected by copyright does not suffice to invoke Article 3(1)(f) of the Directive. Such an interpretation of Article 3(1)(f) would be contrary to Article 4(4)(c)(iii) of the Directive. Rather, it is for the national registration authorities and courts to make an assessment of the current basic principles and moral norms in Norway in order to determine under what circumstances a trade mark registration of a work of art would be regarded as so offensive by the public to justify an application of Article 3(1)(f).

57 Turning to the second question referred, the Norwegian Government submits that the more renowned and culturally significant a work of art is, the higher the probability that the public would be offended by a trade mark registration representing a misappropriation of the work. However, it cannot be presumed, at the outset, that registration of a trade mark consisting of renowned and culturally significant artworks would be regarded as so grievously offensive by the public that the high threshold set for the application of Article 3(1)(f) of the Directive is reached.

58 Furthermore, the Norwegian Government contends that a general application of Article 3(1)(f) to the registration of trade marks consisting of renowned and culturally significant artworks appears contrary to Article 2 and Article 4(4)(c)(iii) of the Directive. Moreover, other grounds of refusal laid down in the Directive, for example Article 3(1)(b) and (c) and Article 3(1)(e)(iii), may safeguard thePage
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public interest, in keeping in the public domain renowned and culturally significant works of art, for which copyright protection has expired.

59 Thus, in answer to the second question referred, the Norwegian Government argues that whether a work of art is renowned and of high cultural significance may be of relevance in the assessment under Article 3(1)(f) of the Directive. Nevertheless, these considerations are not sufficient in themselves to support the conclusion that a trade mark registration would be contrary to public policy or accepted principles of morality.

60 As regards the third question, the Norwegian Government is of the opinion that, since no facts other than the renown and cultural significance of the work are referred to in the request Thus, the Court should not enter into a hypothetical analysis21 of other facts that could be relevant for the assessment. In any event, it would not be possible to provide an exhaustive account of what facts may be of relevance in any individual case, since each case must be assessed on its own merits.

21 Reference is made to the judgment in Shield Mark, C-283/01, EU:C:2003:641, paragraphs 52 to 54.

61 Turning to the fourth question, the Norwegian Government submits that the public interest underlying Article 3(1)(e) of the Directive is to prevent the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other intellectual property rights which the legislature has sought to make subject to limited periods, such as copyright.22 Thus, the aim is to keep the essential characteristics of particular goods, which are reflected in their shape, in the public domain. Moreover, Article 3(1)(e)(iii)Page
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of the Directive excludes trade mark protection for marks consisting of the shape of products, when that shape gives substantial aesthetic value to the goods.23

22 Reference is made to the judgment in Hauck, C-205/13, EU:C:2014:2233, paragraph 31.

23 Reference is made to the judgment in Benetton, cited above.

62 The Norwegian Government observes that, on the basis of a literal interpretation, Article 3(1)(e)(iii) of the Directive applies only to three-dimensional marks reproducing a shape that is relevant to the goods and services for which registration is sought. In its view, however, Article 3(1)(e)(iii) of the Directive would be easily circumvented, and its aim not fulfilled, if two-dimensional marks which provide faithful and naturalistic depictions of the shape of goods were to be treated differently from three-dimensional reproductions of a shape.

63 Therefore, the Norwegian Government takes the view that two-dimensional marks that exclusively give faithful and naturalistic depictions of a shape relevant to the shape of the goods should be assessed in the same manner as three-dimensional marks reproducing such shape.24

24 Reference is made to judgments in Storck, C-25/05 P, EU:C:2006:422, paragraph 29, and Louis Vuitton, C-97/12 P, EU:C:2014:324, paragraph 53.

64 As regards the fifth question, the Government of Norway submits that the public interest underlying Article 3(1)(b) and (c) of the Directive is to preclude signs that are not capable of fulfilling the origin function. These provisions thereby prevent signs from being registered as trade marks, which are descriptive for characteristics of the goods or services, and signs that should be kept free for all traders to use.25

25 Reference is made to judgments in Windsurfing Chiemsee, C-108/97 and C109/97, EU:C:1999:230, paragraph 25, Linde and Others, cited above, paragraphs 73 and 75, and OHIM v Wm. Wrigley Jr. Company (Doublemint), C-191/01 P, EU:C:2003:579, paragraph 31.

65 Further,Page
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the Norwegian Government submits that distinctiveness or descriptiveness must be assessed by reference to the goods and services for which registration is sought and to how the average consumers of those goods and services will perceive the mark.26

26 Reference is made to judgments in Celltech, C-273/05 P, EU:C:2007:224, and Gut Springheide, C210/96, EU:C:1998:369.

66 It follows from case law that the prohibition on registration of descriptive marks may be applied to deny registration of marks reproducing the shape or appearance of goods.27 As is the case under Article 3(1)(b) and Article 3(1)(e)(iii) of the Directive, the assessment under Article 3(1)(c) of the Directive must be the same regardless of whether the mark is in two-dimensional or three-dimensional format.

27 Reference is made to the judgments in Linde and Others, cited above, paragraphs 69 and 70; Nadine Trautwein Rolf Trautwein GbR, Research and Development v OHIM (Representation of a dog), T385/08, EU:T:2010:295; and Trautwein v OHIM (Representation of a horse), T-386/08, EU:T:2010:296.

67 With regard to the sixth question referred, the Norwegian Government maintains that the ECJ has held that the shape or appearance of a mark must depart significantly from the norms and customs in the sector to fulfil the requirement for a distinctive character, as the average consumer is not used to drawing conclusions on the origin of products on the basis of their shape.28

28 Reference is made to judgments in Procter & Gamble, C-473/01 P and C474/01 P, EU:C:2004:260 and Louis Vuitton, cited above, paragraphs 54 and 55.

68 In this regard, the Norwegian Government argues that the requirement that the mark “departs significantly from the norms and customs” does not establish a new and independent ground for refusal. In fact, this requirement is only an interpretation of the requirement for distinctive character applied to certain types of marks. As regards trade marks consisting of works of art, which are byPage
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their nature unique, the question of whether the shape departs significantly from the norms or customs will not be of much guidance in the assessment of distinctiveness, as no relevant norms or customs for comparison exist. Instead, the general distinctiveness requirement will have to be applied. In addition, by virtue of Article 3(1)(c) of the Directive, it must be assessed whether the shape indicated by the mark is descriptive for characteristics of the goods and services.

69 Based on the above considerations, the Norwegian Government submits that the request of the Board of Appeal must be declared inadmissible. In the event that the Court determines that it has jurisdiction, the Government submits that the questions should be answered as follows:

1. Trade mark registration of works of art, for which the term of protection under copyright has expired, may under certain circumstances conflict with the prohibition in Article 3(1)(f) of Directive 2008/95 on registration of marks being contrary to public policy or to accepted principles of morality, but the mere fact that a mark consists of such a work will not be sufficient for the provision to apply.

2. Whether a work of art is renowned or of high cultural significance may be of relevance in the assessment under Article 3(1)(f) of Directive 2008/95, but not as such sufficient to support a conclusion that a trade mark registration would be contrary to public policy or accepted principles of morality.

4. Article 3(1)(e) of Directive 2008/95 applies in the same manner to two dimensional marks giving naturalistic depictions of a shape relevant to the goods, as to three-dimensional marks reproducing such shape. Thus, if a mark consists exclusively of a two-dimensional naturalistic depiction of a sculpture which is relevant to the shape of the goods for which trade mark registration is applied,Page
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Article 3(1)(e) third indent is applicable if the shape of the sculpture gives substantial value to the goods.

5. Article 3(1)(c) of Directive 2008/95 is applicable as a ground for refusal for marks consisting of two-dimensional or three-dimensional reproductions of the shape or appearance of the goods.

6. For two- or three-dimensional marks reproducing the shape or appearance of products, an assessment of whether the shape or appearance departs significantly from the norms or customs in the sector should be conducted under Article 3(1)(c) of Directive 2008/95 if relevant norms or customs for comparison exists. In addition, trade mark registration shall be refused under Article 3(1)(c) if the mark is descriptive of characteristics of the goods or services.

ESA

Admissibility

70 ESA considers the Board of Appeal competent to refer questions to the EFTA Court, since Article 34 SCA does not call for strict interpretation.29 In addition, national boards with institutional set ups and procedures comparable to that of the Board of Appeal have already been considered competent to refer questions to the Court.30

29 Reference is made to Joined Cases E-3/13 and E-20/13 Fred Olsen and Others v the Norwegian State [2014] EFTA Ct. Rep. 400, paragraph 59, and Case E-23/13 Hellenic Capital Market Commission [2014] EFTA Ct. Rep. 88, paragraph 34 and case law cited.

30 Reference is made to Fred Olsen and Others, cited above, paragraph 72, Case E-1/11 Dr A [2011] EFTA Ct. Rep. 484, paragraph 42, and Case E-4/04 Pedicel AS v Sosial- og helsedirektoratet [2005] EFTA Ct. Rep. 1, paragraph 21.

ThePage
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questions referred to the Court

71 As a preliminary remark, ESA submits that according to the case law of the ECJ, all grounds for refusal listed in Article 3(1) of the Directive are independent and require separate examination.31 Likewise, the multiple grounds for refusing registration under Article 3 of the Directive must be interpreted in the light of the respective public interest underlying each of them.32 Moreover, as the grounds for refusal or invalidity set out in Article 3(1) of the Directive are identical in substance to those of Article 7(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (“the Trade Mark Regulation”)33, the case law and practice concerning Article 7(1) of the Trade Mark Regulation are of relevance when assessing Article 3(1) of the Directive.34

31 Reference is made to the judgment in Linde and Others, cited above, paragraph 67.

32 Ibid., paragraph 71 and case law cited.

33 OJ 2006 L 372, p. 12.

34 Reference is made to the judgment in Strigl, C-90/11 and C-91/11, EU:C:2012:147, paragraph 19.

72 With regard to the first question, ESA submits that Article 3(1) of the Directive does not specifically mention as a ground for denying registration the fact that a work has been previously protected by copyright. What is more, a copyrighted work may be registered as a trade mark, provided that the right holder consents. Thus, the fact that the protection period has expired cannot in itself lead to the conclusion that registration of that work is precluded. Also, the protection given to trade marks is rather different to copyright protection. Finally, there are a number of examples where works which have fallen into the public domain after the expiry of copyright have been registered as trade marks.35 However, not every workPage
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that has previously been protected by copyright can be registered as a trademark as soon as the protection period has expired.

35 Reference is made to S. Dusollier, A positive status for the public domain, in Dana Beldiman (ed.), Innovation, Competition, Collaboration, Edward Elgar Publishing, 2015, p. 160.

73 In this regard, ESA submits that, in order to be registered as a trade mark, the work must fulfil the criteria set out in Article 3 of the Directive. In particular, famous works of art which are no longer copyright protected have to fulfil the criterion of distinctiveness pursuant to Article 3(1)(b) of the Directive. In this regard, it could be more difficult to establish distinctiveness for famous works of art which are well-known to consumers as such and which might therefore not easily indicate any commercial origin, as required by the Directive.

74 Moreover, ESA contends, that, by virtue of Article 3(1)(e)(iii) of the Directive, such a work cannot be registered if it consists exclusively of the shape giving a substantial value to the product. This may be the case for many famous works of sculpture as their substantial value necessarily lies in the form itself.36 In the case at hand, it may be particularly difficult to establish distinctiveness and an indication of commercial origin for some of the works, which include works that are among Norway’s most famous artistic works.

36 Ibid., p. 162.

75 Before addressing the second question, ESA considers it useful to first clarify the applicable test for denying registration pursuant to Article 3(1)(f) of the Directive. Thus, ESA addresses the third question first.

76 ESA submits that Article 3(1)(f) of the Directive does not define what constitutes “public policy” or “accepted principles of morality”. EUIPO considers that the rationale of a provision of this kind is to preclude trade marks from registration where granting a monopoly would “contravene the state of law or would be perceived by the relevantPage
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public as going directly against the basic moral norms of society”.37 Further, according to these guidelines, the concept of “public policy” is a reference to EU law applicable in a certain area “which reflect a common understanding on certain basic principles and values, such as human rights”.38 Moreover, the General Court has held that it is necessary to take account not only of the circumstances common to all Member States, but also of the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those states.39

37 EUIPO Guidelines, Part B, Section 4, point 2.7, p. 4.

38 Ibid.

39 Reference is made to the judgment in Couture Tech, cited above, paragraph 34.

77 ESA submits that the case-law concerning Article 7(1)(f) of the Trade Mark Regulation has not strictly distinguished between the assessment of “public policy” and “accepted principles of morality”. The General Court has held that the provision prevents registration of marks that are racist or discriminatory and therefore contrary to the fundamental values of the Union.40

40 Reference is made to the judgments in Couture Tech, cited above, paragraph 15, and PAKI Logistics, cited above, paragraph 21 et seq.

78 Given the specific meaning of “public policy” in the Directive, ESA considers that this concept may be capable of also extending to other legitimate public policies adopted by the EEA States. Typically, the expression would be applicable where the registration of a sign would contravene legislation. It is for the national body to assess whether the registration of a trade mark would be contrary to public policy.

79 The term “accepted principles of morality” is a broad concept. According to the EUIPO Guidelines, the provision of the Trade Mark Regulation and, hence, by extension, Article 3(1)(f) of the Directive excludesPage
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the registration of trade marks which contain blasphemous, racist or discriminatory words or phrases which are clearly conveyed by the mark applied for in an unambiguous manner.41 Its rationale is to preclude assistance to people who wish to further their business aims by means of trade marks that offend certain basic values of civilised society.42

41 EUIPO Guidelines, Part B, Section 4, point 2.7.2.

42 Reference is made to the OHIM Board of Appeal decision of 6 July 2006 in Case R 495/2005-G, Jebaraj Kenneth trading as Screw You, paragraph 13.

80 ESA further submits that the General Court has held that the standard to be applied is that the sign must have a clearly offensive impact on the reasonable consumer with average sensitivity and tolerance thresholds.43 However, it is not necessary to establish that the applicant wants to insult the public by registering a particular trade mark. It is sufficient that the registered trade mark might be seen as offensive.44

43 Reference is made to the judgment in Federico Cortés del Valle López v OHIM (¡Que buenu ye! Hijoputa), T-417/10, EU:T:2012:120, paragraph 21.

44 Reference is made to the judgment in PAKI Logistics, cited above, paragraph 21 et seq.

81 Therefore, ESA argues that, in order for a trade mark to be contrary to Article 3(1)(f) of the Directive, it must either be contrary to public policy or clearly offensive to a reasonable consumer with average sensitivity.

82 As regards the second question, ESA maintains that the request does not identify any public policy reasons why the registration of a well-known work or a work of great cultural value should be precluded. There appears also to be no provision of EEA law that precludes the registration of formerly copyright-protected works under such circumstances.

83 APage
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desire to ensure the greatest possible public access to works of great cultural value and the objective of preventing the exploitation for commercial purposes of works which are of a defining nature for national identity could serve as public policy grounds for refusing registration should the Court be minded to extend the public policy concept in the specific trade mark context. Such a refusal would, however, have to be limited to an assessment carried out on a case by case basis of the works’ cultural value.

84 On the question whether the registration of a work of great cultural value could contradict “accepted principles of morality”, this would require, in ESA’s view, that it is clearly offensive to the reasonable consumer to register such a work as a trade mark. However, ESA questions whether, in fact, the registration of a work of great cultural value would be able to offend the reasonable consumer of average sensitivity. Although in his Opinion in Picaro45 Advocate General Ruiz-Járabo Colomer appeared to take the position that a general interest exists in protecting the name of great artists, this approach was not followed by the ECJ.46

45 Reference is made to the Opinion of Advocate General Ruiz-Járabo Colomer in Ruiz-Picasso and Others v OHIM (Picaro), C-361/04 P, EU:C:2005:531.

46 Reference is made to the judgment in Ruiz-Picasso and Others v OHIM (Picaro), C-361/04 P, EU:C:2006:25.

85 In addition, ESA submits that, although the EUIPO Board of Appeal considers there to be circumstances in which it would be contrary to accepted principles of morality to register certain symbols,47 it has also found that the repute of a work could not prevent its registration as a trade mark.48

47 Reference is made to the OHIM Board of Appeal decision of 17 September 2012 in Case R 2613/2011-2, Republic of Turkey v Yaqub (ATATURK), paragraph 19.

48 Reference is made to the OHIM Board of Appeal decision of 31 August 2015 in Case R 2401/2014-4, Anne Frank Fonds (Le Journal d’Anne Frank), paragraphs 32 to 34.

86 Consequently,Page
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ESA takes the view that whether the work is well-known or of great cultural value cannot in itself prevent such works from being registered as trade marks in the absence of a coherent policy to encourage the dissemination of such works. For a work of great cultural value to be denied registration under Article 3(1)(f) of the Directive, a registration of that kind would have to be contrary to public policy or clearly offensive to the reasonable consumer of average sensibility. It is for the Board of Appeal to assess whether this is the case for the works in question.

87 With regard to the fourth and fifth questions, ESA submits that both Article 3(1)(e)(iii) and Article 3(1)(c) apply to two-dimensional and three-dimensional representations of goods such as sculptures, as in certain cases such shapes may consist exclusively of the shape which gives substantial value to the goods or be merely descriptive of the goods or services provided.

88 Turning to the sixth question, ESA contends, with regard to the notion of distinctive character for the purposes of Article 3(1)(b) of the Directive, that the trade mark must serve to identify the goods in respect of which registration is sought.49 This must be assessed by reference to the relevant public’s perception of the mark.50

49 Reference is made to the judgment in Audi, C-398/08 P, EU:C:2010:29, paragraph 33.

50 Ibid., paragraph 34.

89 As regards Article 3(1)(c) of the Directive, ESA submits that the provision prevents the registration of trade marks which consist of purely descriptive signs that other traders might also want to use.51

51 Reference is made to the judgment in Representation of a dog, cited above, paragraph 49.

90 AccordingPage
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to ESA, Article 3(1)(b) and Article 3(1)(c) of the Directive are applicable to signs that consist of two-dimensional and three-dimensional representations of the shape or appearance of the goods. Therefore, both the distinctiveness of the sign pursuant to Article 3(1)(b) and the descriptiveness of the sign pursuant to Article 3(1)(c) of the Directive have to be examined before a sign can be registered as a trade mark.

91 Finally, ESA submits that, according to ECJ case law, the examiner first has to assess whether registration would be contrary to Article 3(1)(e) of the Directive. Even if that preliminary obstacle is overcome, neither the wording of Article 3(1) of the Directive nor the scheme of the Directive indicate that the other grounds for refusal, including all the criteria of Article 3(1)(c), should not also apply to applications to register the three-dimensional shape of product marks.52

52 Reference is made to the judgment in Linde and Others, cited above, paragraph 66.

92 Therefore, ESA proposes that the Court should answer the questions as follows:

1. Article 3(1)(f) does not prevent the registration of signs as trade marks where the sign consists of a work that has been protected by a copyright, but for which the protection period has expired.

2. The fact that a sign consists of a work that is well-known or of great cultural value cannot in itself prevent such signs from being registered as a trade mark pursuant to Article 3(1)(f) in the absence of a coherent policy to encourage the dissemination of such works. It can however be a factor in the assessment of whether the registration of such a sign would be offensive to the reasonable consumer of average sensitivity.

3. ThePage
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assessment of whether the registration of a trade mark is contrary to “public policy” pursuant to Article 3(1)(f) of the Trade Marks Directive depends on the particular public policy in question. In the assessment of whether the registration of a trade mark is contrary to “accepted principles of morality” pursuant to Article 3(1)(f) of the Directive it is particularly important to consider whether the sign contains blasphemous, racist or discriminatory words or phrases, which are clearly conveyed by the mark applied for in an unambiguous manner, and is clearly offensive to the reasonable consumer with average sensitivity.

4. Article 3(1)(e)(iii) and Article 3(1)(c) of the Trade Marks Directive are applicable to two- and three dimensional representations of goods such as sculptures.

5. Article 3(1)(b) and Article 3(1)(c) of the Trade Marks Directive are applicable to signs which consists of two- and three dimensional representations of the shape or appearance of the goods, and therefore both the distinctiveness of the sign pursuant to Article 3(1)(b) and the descriptiveness of the sign pursuant to Article 3(1)(c) of the Trade Marks Directive have to be examined before a sign can be registered as a trade mark.

The Commission

93 As regards the first three questions, the Commission contends, in accordance with the judgment in Couture Tech, that the absolute grounds of refusal laid down in Article 7(1) of the Trade Mark Regulation must be assessed with reference to the average consumer.53 The relevant public may also be the average consumer in a single Member State.54 In the case of Article 3(1)(f) of the Directive, anPage
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assessment must be made as to how the sign in question is perceived by the average consumer who is a member of the general public in the Member State concerned.

53 Reference is made to the judgment in Couture Tech, cited above, paragraph 27.

54 Reference is made to the judgment in Couture Tech, cited above.

94 According to the Commission, the notions of “contrary to public policy” and “contrary to accepted principles of morality” in Article 3(1)(f) of the Directive must be distinguished. The term “contrary to public policy” may be considered on its own merits and a registration of a trade mark may be held to be “contrary to public policy” without it being offensive on any moral ground as such.

95 Such an interpretation of the phrase “contrary to public policy” allows for the consideration of an economic ground, a ground based on allowing free use of any particular subject matter, as opposed to the grant of an exclusive property right in the form of a trade mark, or a cultural ground particular to the Member State concerned.

96 However, according to the Commission, the mere fact that a trade mark consists of, or includes, an artistic work which is protected by copyright law does not justify, in itself, a refusal under the national provision giving effect to Article 3(1)(f) of the Directive. In principle, therefore, a sign may be protected concurrently as a trade mark and under the copyright regime.

97 On a second point, the Commission submits that the primary function of a trade mark is to guarantee the identity of the goods or services designated by the mark. Thus, a trade mark not only enables its proprietor to distinguish himself from his competitors, but also provides a guarantee to the consumer or end-user that all the goods or services covered by the sign, constituting the trade mark, have the same trade origin.

98 Moreover, according to the Commission, the relevant public for the purposes of the assessment by virtue of Article 3(1)(f) of the Directive is the general public that views and appreciates works of art and who may consider such works of art to be part of the national heritagePage
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accessible to and useable by all. In its view, in the case of well-known works of art for which copyright protection has expired, the relevant public would have an expectation that goods and services applying the works of art could be produced by any economic operator.

99 The effect of the grant of a trade mark in such circumstances would be to perpetuate exclusive rights over the work of art, which should normally be in the public domain and capable of being freely used by any person including any economic operator in whatever manner.

100 In this regard, the Commission submits that, in relation to shapes, the ECJ’s case law establishes that the rationale of absolute grounds of refusal is “to prevent the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods”.55 In its view, this statement of the ECJ should not necessarily be limited to shapes but may be of general application.

55 Reference is made to the judgment in Philips, cited above, paragraph 78.

101 Moreover, the Commission continues, due regard must be had to the fact that to appropriate a work of art for an indefinite period of time through the registration of a trade mark contradicts the very purpose and logic of the time limits established for copyright. In addition, it would grant the trade mark owner more extensive rights than those enjoyed by the author’s estate.56 Hence, once copyright protection in the work has expired, the work of art should, in the absence of any other form of protection that applies at that time, be able to be freely used by any person.

56 Reference is made to the Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark, cited above, points 50 to 52.

102 Further,Page
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the Commission argues that the more well-known the work of art is, the more likely the circumstances of the author or artist will be known to the general public. Therefore, the possibility cannot be excluded that the registration as a trade mark could also be considered as the desecration of a work. This may be the case if the work of art in question holds a particular importance in the collective memory and the common cultural heritage as an emblem of sovereignty or of the nation’s foundation and values. Therefore, the cultural value of a well-known work of art may also be taken into account.

103 Moreover, the Commission contends that the general public may never identify a work of art as emanating, for example, from a museum unless the name of the museum accompanies the representation of the work of art in the trade mark application.

104 As far as the identity of the trade mark applicant and the nature and type of goods and services are concerned, the Commission submits that, in principle, these factors should usually be irrelevant for the purposes of assessing the public policy dimension.57 Nevertheless, there may be cases in which the nature of the goods or services applied for can reinforce the public policy considerations for precluding registration where those goods and services appear incompatible with the dignity of the artistic work and the symbol with which this work is associated.

57 Reference is made to judgments in PAKI Logistics, cited above, paragraphs 16 to 18 and 34, and ¡Que buenu ye! Hijoputa, cited above, paragraphs 21 and 26.

105 Accordingly, the Commission takes the view that there may be circumstances where it would be “contrary to public policy” to proceed to register a trade mark where it includes or consists of a copyright work for which the copyright is about to expire or has expired.

106 InPage
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relation to the fourth question, the Commission submits, that the reference to “shape” in Article 3(1)(e)(iii) of the Directive cannot be construed as meaning that the two-dimensional representation of an object, including a sculpture, would necessarily fall outside the scope of application of that provision. In its view, “the shape of goods” refers to their outward appearance that is, their configuration or their contours, and not necessarily to their volume. A two-dimensional sign may therefore represent the “shape” of a product.58 Moreover, the ECJ takes a cautious approach towards Article 3(1)(e) of the Directive.59 Thus, Article 3(1)(e)(iii) of the Directive must be interpreted as applying also to two-dimensional representations of objects, such as sculptures.

58 Reference is made to the judgment in Yoshida Metal Industry, T-331/10, EU:T:2012:220, paragraph 27.

59 Reference is made to the judgment in Société des Produits Nestlé, C-215/14, EU:C:2015:604, paragraphs 36 to 40.

107 As regards the fifth question, the Commission points out that, in its request, the Board of Appeal refers to “two- or three-dimensional representations of the shape or appearance of the goods”. However, according to the Commission, the difficulty in answering the fifth question lies in the fact that the request does not specify the goods and services for which the trade mark application was made.

108 The Commission claims that the public interest aim of Article 3(1)(c) of the Directive is that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is applied for may be freely used by all. Examination of the descriptive character of a sign requires a determination whether there is a sufficiently direct and concrete link between the sign and the kind, quality, or other characteristic of the goods or services in question as specified in Article 3(1)(c) of the Directive, having regard also to the publicPage
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interest in keeping descriptive signs, which thus lack distinctiveness, free for the use of all.

109 The Commission submits that, in principle, a work of art does not convey direct and concrete messages, as, by its very nature, art is open to subjective interpretation. A work of art is also by its nature disconnected from products or services for which it may serve in trade within the meaning of Article 3(1)(c) of the Directive.

110 However, the Commission argues that, in the case of a trade mark consisting of, or including, the two-dimensional representation of a sculpture, such a sign could be descriptive in respect of any good or service which has, or would be expected by the public to have, the sculpture or its author as a main object. Thus, such a sign could be descriptive of the content of printed matters such as books (Class 16), of the purpose of arranging of travel tours (Class 39) or cultural activities (Class 41) as classified in the Nice Agreement. In such a case, there could be a genuine interest in allowing third parties to use the sign at issue to indicate to the public the content or purpose of their goods or services.

111 As regards the sixth question, the Commission limits its assessment, in light of its observations made with regard to the fifth question, to Article 3(1)(b) of the Directive. It contends that the previous considerations can be reiterated when applying Article 3(1)(b) of the Directive. Sculptures may coincide inter alia with the appearance of works of art of common metal (Class 6) or works of art of precious metal (Class 14) or lithographic works of art, posters and postcards (Class 16).

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Commission submits that, according to the case law of the ECJ, “only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character”.60

60 Reference is made to the judgment in Storck, cited above, paragraph 26 and the case law cited.

113 However, the Commission argues that it would be difficult to discern the business sector and the relevant “norm of the sector”, where a sign consists of a three-dimensional work that is work of art and the goods applied for merely reproduce this work of art in order to create a replica which has no utility other than purely ornamental. In these circumstances, the criterion of “departing significantly” appears irrelevant. Moreover, a replica can never depart significantly from the norms because these norms are always defined by reference to the original work of art on which the replica is based.

114 Thus, the Commission argues that in the case at hand a relevant factor is whether the characteristics of a sign are, in the public’s perception, purely attributable to the ornamental and decorative nature of the goods, rather than indicating the commercial origin of these goods. If this is the case, the sign is devoid of any distinctive character and falls within Article 3(1)(b) of the Directive.61 The ECJ confirmed this view when it held in the context of infringement actions that where “the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with the registered mark”.62

61 Reference is made to judgments in EE Ltd, T-77/14, EU:T:2015:620, paragraphs 44 to 48, and Glaverbel, T-36/01, EU:T:2002:245, paragraph 28.

62 Reference is made to the judgment in Adidas, C-408/01, EU:C:2003:582, paragraph 40.

115 Therefore,Page
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the Commission proposes that the Court should answer the questions referred as follows:

1.-3. It may be contrary to public policy within the meaning of Article 3(1)(f) of Directive 2008/95/EC in certain circumstances, to proceed to register a trade mark in respect of a well-known copyright work of art, where the copyright protection in that work has expired or is about to expire. The status of that well known work of art including the cultural status in the perception of the general public for that work of art may be taken into account.

4. Article 3(1)(e)(iii) of Directive 2008/95/EC must be interpreted as applying also to two-dimensional representations of object such as sculptures.

5. Article 3(1)(c) of Directive 2008/95/EC applies to two- or three-dimensional representations of the shape or appearance of the goods where there exists a sufficiently concrete link between the sign and the kind, quality or any other characteristic within the meaning of that provision having regards to the public interest underlying that provision. Signs consisting of two- or three-dimensional representation of the shape or appearance of the goods should not be considered descriptive and therefore lack distinctiveness, as a matter of principle, for the sole reason that they coincide with the shape of the goods.

6. When applying Article 3(1)(b) of Directive 2008/95/EC to trade marks consisting of two- or three-dimensional representation of artistic works which coincide with the shape or appearance of the goods applied for, whether this shape or appearance departs significantly from the norm of presentation of the goods at issue is not a relevant factor.

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relevant factor is whether the characteristics of a sign are, in the general public’s perception, purely attributable to the ornamental and decorative nature of the goods at issue, rather than indicating the commercial origin of these good and thereby is devoid of any distinctive character.

The Czech Government

116 The Czech Government provides a joint answer to the first three questions. As a preliminary remark, the Czech Government submits that when determining whether the trade mark is contrary to public policy or accepted principles of morality attention should be paid only to the trade mark itself.63 More specifically, what needs to be considered is the intrinsic quality of the trade mark and not the circumstances relating to the conduct of the person applying for the trade mark.64 Consequently, the court deciding the case should assess whether the registration of a trade mark, namely the acknowledgement of an exclusive link between the sign and the products and/or services of the applicant, would conflict with public policy or principles of morality as set out in Article 3(1)(f) of the Directive.

63 Reference is made to the judgment in INTERTOPS, cited above, paragraph 27.

64 Ibid., paragraph 28.

117 Further, the Czech Government submits that public policy grounds can only be relied on “if there is a genuine and sufficiently serious threat to a fundamental interest of society and, moreover, those grounds must not serve purely economic ends”.65 Thus, Article 3(1)(f) of the Directive may only be applied in exceptional circumstances.

65 Reference is made to the judgment in VBV – Vorsorgekasse, C-39/11, EU:C:2012:327, paragraph 29.

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regards a famous piece of art, for which the protection period has expired and which forms part of the universal cultural heritage, the Czech Government argues that there is a fundamental interest of society at stake, namely the interest in enabling access to these outstanding creations of the mind for everyone.66 Moreover, the interest of public accessibility cannot be achieved if an individual can gain an exclusive right resulting from the registered trade mark.67 Therefore, trade mark registration of copyright works for which the protection period has expired should be refused on the ground of public policy, in exceptional cases, where there is a fundamental interest of society in leaving certain famous pieces of art available to everyone, such as well-known and outstanding creations of mind that are part of the universal cultural heritage.

66 Reference is made to the rejection by the Czech Industrial Property Office of a trade mark application in Case No O-98450.

67 Reference is made to the Opinion of Advocate General Ruiz-Járabo Colomer in Shield Mark, cited above, points 51 and 52.

119 As regards the fourth question, the Czech Republic submits that a trade mark which is a two-dimensional representation of a sculpture can hardly serve to identify the goods or services covered by that trade mark, as required by the criterion of distinctiveness under Article 3(1)(b) of the Directive.68 It is more likely that the relevant group of consumers would be tempted to consider the trade mark on the products only as a reproduction of the relevant piece of art.

68 Reference is made to the judgment in Société des Produits Nestlé, cited above, paragraph 59 et seq.

120 Therefore, the Czech Republic submits that the requirement of distinctiveness as specified in Article 3(1)(b) in connection with Article 3(1)(e)(iii) of the Directive is, in terms of sculptures, not fulfilled.

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answer to the fifth question, the Czech Government submits that a sculpture, as a unique result of creativity of an artist, can never be considered a descriptive sign as specified in Article 3(1)(c) of the Directive.

122 The Czech Republic considers that, in light of the answers proposed to the previous questions, it is not necessary to provide an answer to the sixth question.

123 As a final point, the Czech Republic states that its earlier observations on Questions 1 to 6 only concern the mandatory grounds for refusal. For the sake of completeness, it observes that, having regard to the factual circumstances, Article 3(2) of the Directive may also be relevant.

124 Consequently, the Czech Republic proposes that the Court should answer the questions as follows:

1.-3. Article 3(1)(f) of the Directive 2008/95 should be read in the way, that in exceptional cases, where there is a fundamental interest of the society on leaving certain very famous pieces of art available to everybody, such as well-known and outstanding creations of mind being part of the universal cultural heritage, the trade mark registration of copyright works, for which the protection period has expired, should be refused on the ground of public policy.

4. The requirement of distinctiveness as stated in Article 3(1)(b) in connection with Article 3(1)(e)(iii) of the Directive 2008/95, in terms of sculptures, is not fulfilled.

5. A sculpture as a unique result of creativity of an artist can never be considered to be a sign or indication in terms of Article 3(1)(c) of the Directive 2008/95.

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German Government

125 The German Government provides an answer only to the first question. It does not consider it necessary to assess the second and third questions, since its answer to the first question is in the negative.

126 As a preliminary point, the German Government notes that the notions of “public policy” and “accepted principles of morality” laid down in Article 3(1)(f) of the Directive are not defined in the Directive and, since this provision is a general clause, require interpretation within the systematic context of the particular regulations in which they appear, while also taking into account the overall purpose of such regulations.

127 The German Government contends that the decision whether a trademark should be excluded from registration on the basis of Article 3(1)(f) of the Directive must always be reached by reference to the goods or services for which trade mark registration is sought, while also giving consideration to the public interest underlying the particular rule. Ultimately, however, it is of no significance that it is impossible to ascertain the specific goods and services for which NIPO refused to grant trademark registration, since the existence of copyright, or expired copyright, is not relevant for the assessment under Article 3(1)(f) of the Directive.

128 Furthermore, the German Government submits that even if a trade mark contravenes a statutory provision, that does not constitute per se a violation of public policy, unless the provision in question actually serves to protect public policy. Moreover, the public policy notion applies primarily to signs whose exploitation is expressly prohibitedPage
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by law.69 Copyright law does not prohibit a work from being exploited per se. Rather it grants the originator various rights over his work and it is incumbent upon the originator to authorise or prohibit the use of his work as a trade mark. This right is also reflected in Article 4(4)(c)(iii) of the Directive.

69 Reference is made to the judgments in PAKI Logistics, cited above, paragraph 12, and Couture Tech, cited above, paragraph 49.

129 According to the German Government a violation of “accepted principles of morality” could occur if the use of a sign, although not prohibited by a statutory provision, is perceived by the relevant public as being deeply abusive or offensive.70 However, copyright plays no part in such assessment.

70 Reference is made to the judgment in PAKI Logistics, cited above, paragraph 12.

130 Therefore, the German Government contends that registering a copyright work as a trade mark cannot be regarded as a contravention of public policy or accepted principles of morality within the meaning of Article 3(1)(f) of the Directive.

131 Moreover, the German Government submits that once the copyright protection of a work expires, it results in freedom of exploitation. This means that a work can generally be registered as a trade mark by anyone, provided that the other prerequisites for trade mark protection are met. Moreover, were it to be possible always to prevent trade mark usage by citing a contravention of public policy, this would reverse the approach taken by the European Union legislature, namely, that the general public can freely exploit a work once the copyright has expired.

132 Finally, the German Government maintains that third parties can only be prohibited by a trade mark from engaging in the product-relatedPage
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exploitation of a sign for specific goods or services. Thus, access to a work and exploitation of a work as a work cannot be impaired by trademark law. Furthermore, the general commercial exploitation of a work is not precluded by registering the work as a trade mark for specific goods or services.

133 Therefore, the German Government proposes the following reply to the request:

Article 3(1)(f) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks should be understood as meaning that a trade mark should not be excluded from registration or, if registered, should not be liable to be declared invalid on the grounds that it includes a work or parts of a work for which the copyright term has expired.

The Government of the United Kingdom

134 At the outset, the Government of the United Kingdom argues, as regards the first three questions, that in many cases it will be difficult for an applicant to demonstrate that a well-known work of art is distinctive in a trade mark sense so as to be capable of registration as a trade mark.

135 As regards the possibility to rely on Article 3(1)(f) of the Directive to refuse the registration of a trade mark due to the expiry of previous copyright, the Government of the United Kingdom argues that the legislature could not have intended the law to require the refusal or invalidation of trade marks for all works in which copyright has expired. An overlap between trade marks and copyright is usually unobjectionable.

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Government of the United Kingdom submits that the focus must be on the mark itself and not the conduct of the applicant.71 The question whether or not a sign has previously been subject to copyright is not an intrinsic aspect of the sign for which registration is sought and is therefore irrelevant when assessing compliance with Article 3(1)(f) of the Directive. Accordingly, if there is nothing inherently offensive or immoral encompassed in the mark in the form for which registration is sought, Article 3(1)(f) cannot be relied upon to prevent registration of the trade mark sought. The ECJ’s case law provides no existing basis for relying on Article 3(1)(f) to refuse to register a work formerly subject to copyright as a trade mark.72

71 Reference is made to the judgment in Durferrity v OHIM, T-224/01, EU:T:2003:107, paragraph 76.

72 Reference is made to the judgment in Shield Mark, cited above.

137 As regards the concept of public policy, the Government of the United Kingdom submits that the concept is found throughout European law and commonly appears as an exception enabling Member States to derogate from a rule of EU law by reason of their national situation or fundamental principles. The “public policy” exception in Article 3(1)(f) of the Directive performs a similar function. The notion should be applied restrictively, and although Member States have discretion as to what amounts to “public policy”, this is subject to judicial supervision.73

73 Reference is made to the judgment in Bouchereau, 30/77, EU:C:1977:172, paragraphs 33 to 34.

138 According to the Government of the United Kingdom, three different situations exist which might trigger the application of Article 3(1)(f) of the Directive: first, trade marks with criminal connotations; second, those with offensive religious connotations; and, third, those which are considered explicit or taboo.

139 Moreover,Page
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the Government of the United Kingdom contends that it is unnecessary to stretch the scope of Article 3(1)(f) of the Directive in order to prevent the monopolisation of famous works of art from occurring. It is likely that famous cultural works will fail to satisfy the requirement of distinctiveness in Article 3(1)(b) of the Directive.74 The ECJ has emphasised on a number of occasions that the essential function of a trade mark is to guarantee the identity of the relevant goods to the consumer by enabling him, without any possibility of confusion, to distinguish the goods from those with another origin.75 If, however, the mark were registered in a sphere entirely unrelated to the origin of the mark, distinctiveness may be more likely.76

74 Reference is made to Annette Kur, Exceptions to Protection Where Copyright and Trademark Overlap: Parodies, News Reporting and Other “Speech” Use of Copyright, General Report, in Jane Ginsburg and June Besek (eds.), Adjuncts and alternatives to copyright/Régimes complémentaires et concurrentiel au droit d’auteur. Proceedings of the ALAI Congress June 13-17 2001, ALA-USA, New Your 2002, 594, at pp. 600-1; and Mona Lisa, cited above.

75 Reference is made to the judgment in Société des Produits Nestlé, cited above, paragraph 14.

76 Reference is made to the judgment in Shield Mark, cited above, paragraph 14.

140 Moreover, the Government of the United Kingdom argues that registration may also be denied under the “bad faith” provision pursuant to Article 3(2)(d) of the Directive if registration of marks that are cultural works is sought merely to obtain a monopoly, and not with any intention of using the marks as trade marks.77

77 Reference is made to Martin Senftleben, Public Domain Preservation in EU Trademark Law – A Model for Other Regions? The Trade Mark Reporter 10/2013; 103(4):775; and to the judgment in Lindt & Sprüngli, C-529/07, EU:C:2009:361, paragraphs 44 and 45.

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regards the fourth question, the Government of the United Kingdom submits that Article 3(1)(e) of the Directive is applicable to two-dimensional representations of sculptures, provided that the shape depicted in the representation gives substantial value to the goods.78

78 Reference is made to the judgment in Philips, cited above, paragraph 75.

142 Turning to the fifth question, the Government of the United Kingdom submits, at the outset, that the shape of goods may constitute a trade mark. However, shape marks have been refused on the ground that the shape in question lacks distinctiveness, as required by Article 3(1)(b) of the Directive,79 or that the mark is descriptive of the product for which the mark is sought, as provided by Article 3(1)(c) of the Directive. The rationale for refusing to register pursuant to Article (3)(1)(c) is that descriptive signs should be available to all traders, unless the mark has acquired distinctiveness.80

79 Reference is made to the judgment in Storck, cited above, paragraph 30.

80 Reference is made to the judgment in Windsurfing Chiemsee, cited above, paragraph 25.

143 Thus, the Government of the United Kingdom submits that Article 3(1)(c) of the Directive, like Article 3(1)(b) of the Directive, may be applicable to a shape mark that is a two-dimensional representation of the shape or appearance of the goods. The shape of a product is capable of performing a descriptive function where the shape is descriptive of a characteristic of the goods.

144 Turning, finally, to the sixth question, the Government of the United Kingdom submits that in relation to particular artistic articles, such as sculptures, shapes necessarily vary a great deal as a result of their artistic purpose. As a consequence, it is more difficult to show that any particular shape is outside the norms and customs of that particular sector. A mark may also, or alternatively, be refused under Article 3(1)(c) of the Directive if the mark is descriptive.

145 Therefore,Page
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the Government of the United Kingdom proposes that the Court should answer the questions as follows:

1. The prohibition in Article 3(1)(f) is not applicable by reason of the protection period in copyright for a work having expired in advance of trade mark registration being sought for that work.

2.-3. In the light of the answer to Question 1, no answer to these questions is necessary.

4. Article 3(1)(e)(iii) of the Directive is applicable to two-dimensional representations of sculptures, provided that the shape depicted in the representation gives substantial value to the goods.

5. Article 3(1)(c) may be used as legal authority for refusing trade marks that are two or three-dimensional representations of the shape or appearance of the goods where the representation of the shape of the goods is descriptive of a characteristic of the goods in question.

6. The registration of a shape trade mark may be refused under Article 3(1)(c) of the Directive on the grounds that the shape of the goods depicted by the mark is descriptive of a characteristic of the goods concerned. In addition registration may be refused under Article 3(1)(b) of the Directive on the grounds that the shape of the goods depicted does not depart significantly from the norms and customs for the type of goods at issue.

Carl Baudenbacher
Judge-Rapporteur