The
application covered goods in classes 16 (printed matter; photographs;
stationery; office requisites; bookbinding materials; instructional and
teaching materials), 18 (luggage; carrying bags), 21 (glassware,
porcelain and earthenware; household and kitchen utensils and
containers) and 25 (clothing).
The applicant is the granddaughter of the photographer who took the picture. She claimed to own the rights to it.
The
German Patent and Trade Mark Office rejected the application for
lacking distinctiveness. The examiner found that the sign consists of
the picture named ‘Sprung in die Freiheit’ (‘Leap into freedom’). It was
taken on 15 August 1961 in Berlin and shows the 19-year old border
policeman Conrad Schumann, who escaped from East Berlin to West Berlin
by jumping over the barbed wire fence separating the two parts of the
city. The picture is part of the Memory of the World Programme of UNESCO
since 2011.
The examiner argued that the goods can be
merchandise or memorabilia, which may be sold in the vicinity of, for
instance, the Berlin wall museum. On these goods the trade mark would be
perceived as a motif only. As regards ‘printed matter; photographs;
instructional and teaching materials’ the sign would be understood as
referring to the topic or theme of those goods.
Additionally,
the relevant public would perceive the sign only as the representation
of a well-known picture and a means of advertising but not as an
indication of the commercial origin.
The applicant appealed.
The German Patent Court’s decision The German Patent Court dismissed the appeal, confirming that the sign lacked distinctiveness (case
29 W (pat) 509/21).
The
applicant relied on the case law according to which portraits are, in
principle, deemed to be distinctive and non-descriptive. She also argued
that the photograph is licensed for various publications, including for
newspapers, school books and postcards. Since the unauthorized use of
the picture increased, the applicant sought trade mark protection in
order to obtain damages and injunctive relief if identical or similar
pictures are used for identical or similar goods. The applicant further
argued that she already has a monopoly on the use of the picture, which
is why trade mark protection cannot be denied on grounds that
registration would grant an unjustified monopoly.
The German
Patent Court held that figurative marks are subject to the same
requirements as other types of marks. If the sign consists of the
real-life picture of an identifiable person, it is to be treated the
same way as word marks consisting of a name. They are, in principle,
distinctive.
An exception to this rule are pictures of famous
people. They are considered to be non-distinctive if there is a thematic
connection between the person and the goods or services or if the
person would be perceived merely as a means of advertising.
The
judges also mentioned that works of art cannot be deemed non-distinctive
just because the term of copyright protection has expired and they are
in the public domain.
On that basis, the German Patent Court
agreed with the examiner’s finding that the picture and its origin are
known to the average consumer in Germany. The relevant public would
recognise the photograph only as such and as a motif or information
about the goods. Pictures of historical moments are often used to
illustrate the topic or theme of certain goods such as books. They are
also printed on posters, shirts, bags or mugs as motifs.
The applicant relied on the
AS v Deutsches Patent- und Markenamt judgment of the Court of Justice of the EU (case C‑541/18, IPKat
here).
She argued that the sign can be used in a way that it will be perceived
as an indication of the commercial origin. The judges held that, due to
the picture’s symbolic meaning, it is most likely to be used on the
outside and front side of the goods but not on labels or the underside
of a mug. Use on the outside or front side of goods would not be
perceived as indicating the commercial origin.
The applicant’s
argument relating to her copyright was dismissed because other IP rights
that might subsist in the sign in question are not relevant for
assessing the distinctive character.
Comment The
decision confirms the principle that a sign may be registered as a
trade mark even though it enjoys copyright, design or any other
protection, as long as there is no absolute ground for refusal. While
photographs of a person’s face are considered to be inherently
distinctive even for model services (IPKat
here),
the same is not true for pictures that include other elements, such as
the one depicted above. Their meaning often goes beyond the specific
scene and this meaning is likely to be found descriptive. As a
consequence, trade mark applications for these pictures can be expected
to be rejected as non-distinctive.
An interesting question is
whether pictures of historic moments are protected by copyright. The
Court of Justice of the EU held that copyright protection requires the
work to be the author’s own intellectual creation that is the result of
free and creative choices (summary of the case law on The IPKat
here).
For many of the pictures of historic moments it seems to be the case
that the photographer just happened to be at the right time in the right
place and the only choice they had was whether to take the picture or
not. Therefore, photographers might have to resort to related rights for
‘simple’ pictures, which are allowed but not harmonized in the EU. An
overview of these rights for France, Germany and Italy can be found
here.