Munch ado about nothing? Oslo City Council seeks iconic registrations

Last Monday, in "Night Watch, Why Not? The art of trade mark application", this weblog hosted an amusing guest piece by Bas Kist on his firm's decision to apply to register the Rembrandt masterpiece "The Night Watch" as a Benelux trade mark. A further guest post, "Copyright term, authorship and moral rights: the intriguing tale of Anne Frank's Diary", by Mira T. Sundara Rajan, discussed the efforts made by the Anne Frank Foundation to retain control of Anne Frank's Diary. There is now a sequel that brings together the themes of trade mark registration and keeping control of works in which the copyright expires.  This comes from Thomas Hvammen Nicholson (Protector IP Consultants AS, Norway), who writes about the trade mark registrability, or otherwise, of some iconic artwork:

As you may be aware, there is a portfolio of pending trade mark applications fororks of art in Norway. The copyright terms for the works of the artist Edvard Munch [died 1944] and the sculptor Gustav Vigeland [died 1943] have recently expired.   Oslo Kommune (Oslo City Council), as a benefactor of both estates, would like to continue to control the use of their works. They have therefore filed more than 100 trade mark applications in Norway relating to the artists [to check them out, just search under applicant name “Oslo Kommune” on TMview]. Several of these applications have been extended to the EU, China and the US.

The applications consists of names, signatures, drawings, paintings and pictures of sculptures. It almost seems as if they have filed for the whole Vigeland sculpture park in Oslo.

So, how to examine these applications consistently? The Norwegian Intellectual Property Office decided to refuse seven applications, including depictions of the famous sculpture Sinnataggen (above, right), a layout of the Vigeland park and pictures of some of the gates in the park. Examination of the remaining applications has been suspended.

Some of the applications, including that relating to Munch’s Scream and Madonna and a picture of Vigeland’s sculptures Sinnataggen and Monolitten have been extended to the EU, US and China. The marks have been registered in OHIM, but not in the US (inter alia “ornamental refusal”) or in China (“the mark is likely to produce undesirable social consequence”!).

In Norway, all of the seven applications were refused on the basis of lack of distinctiveness. Further, the Norwegian IPO found that some of the marks were descriptive for jewellery in class 14 and monuments in class 19. They also found that for goods in classes 14 and 19, the mark merely consisted of a shape which confers substantial value on the goods. The applicant has appealed to the Boards of Appeal, who in turn are about to or have already taken the unusual step of referring the case to the EFTA Court for a preliminary judgment. The idea being that this is the EFTA equivalent of the CJEU I guess.  Unlike the CJEU, the EFTA has not previously dealt with many trade mark cases, and to my knowledge none regarding distinctiveness, so this could be quite interesting …

This Kat wonders why it was thought necessary to seek an opinion from the EFA Court, which basically applies the rulings of the Court of Justice of the European Union unless there is a gap in CJEU law that it being asked to plug.  Maybe the form of the questions put to the EFTA Court will contain some novelty. We look forward to learning more!