Moët Hennessy Champagne Services (Moët) is the proprietor of several trade marks for Dom Perignon Champagne (the Dom Pérignon marks). The Dom Pérignon marks are considered well-known within the meaning of article 6bis Paris Convention for the Protection of Industrial Property.
Belgian artist Cédric Peers is known for exploring the boundaries between marketing and art in his work. He describes his style as "contemporary, playing with pointillism and pop art." In his work, he includes logos of well-known marks. He has created clothing and artwork featuring the Dom Pérignon marks.
Moët started summary proceedings to prevent Cedric Peers from continuing his allegedly infringing act before the Brussels Commercial Court. In respect of clothes, the Brussels Commercial Court held that Cédric Peers infringed the Dom Pérignon trademarks by depicting them on clothing.
With respect to the artwork, the Court referred questions for a preliminary ruling to the Benelux Court of Justice regarding the interpretation of article 2.20 (1)(d) Benelux Convention on Intellectual Property (BCIP).
Article 2.20 (2)(d) BCIP allows a trade mark owner to prevent a third party from using a sign for purposes other than those of distinguishing goods or services, if that use would, without due cause, take unfair advantage or is detrimental to the distinctive character or the reputation of the trade mark.
The questions posed by the Court were whether freedom of speech – and, more particularly, artistic freedom – as protected by article 10 European Convention on Human Rights (ECHR) could rise to the level of 'due cause' under article 2.20 (1)(d) BCIP, and if so, under what conditions.
The Benelux Court of Justice referred to case law of the CJEU. In Leidesplein Beheer/Red Bull (February 6, 2014, C-65/12), the CJEU held that the due cause-exception is meant to strike a balance between the interests of the trade mark owner and the third party use of the sign.
The Benelux Court of Justice further referred to the preamble of Trademark Directive (EU) 2015/2436 in which freedom of expression and artistic expression are explicitly mentioned. Under no. 27 of the preamble of the right to freedom of speech must be warranted when applying the Directive.
The Benelux Court of Justice concluded by stating that artistic expression, as part of freedom of expression, is protected by article 1 ECHR, and can constitute 'due cause' under article 2.20(1)(d) BCIP. This means that this right is also subject to the same limitations as article 10 (2) ECHR, meaning that an artistic expression may not be aimed at causing harm to the trade mark.
This ruling seems to broaden slightly the scope of the use of the right to freedom of speech under the due cause-exception.
In Darfurnica (The Hague District Court, 4 May 2011), Louis Vuitton Malletier SA sued the artist Nadia Plesner for depicting an African boy with a chihuahua and a Louis Vuitton bag in her painting. By means of this painting, Nadia Plesner tried to point out that the media spent more time broadcasting celebrities like Paris Hilton than addressing the issues in Darfur. The Court in first instance held that Nadia Plesner's work was protected under the right to freedom of expression.
An important consideration in coming to that conclusion seemed to be that Plesner's work was non-commercial. Because Cédric Peers' work is more commercial than Plesner's, the Court seems to have broadened the possibility of relying on freedom of expression when using works in art that are protected by intellectual property rights.
