This rose further to request for an advisory opinion of the EFTA Court pursuant to Article 34 of Agreement between EFTA states on the establishment of surveillance authority and a court of Justice, and concerned interpretation of Trademark Directive. All these issues were at stake in a case that the EFTA Court

[this court has jurisdiction with regard to EFTA States which are parties to the EEA Agreement, ie Iceland, Liechtenstein, and Norway] decided earlier this week and that, while pending, had attracted considerable attention [also the European Copyright Society issued an Opinion on it]: it is Case E-5/16 – Norwegian Board of Appeal for Industrial Property Rights – appeal from the municipality of Oslo.

Background

On consideration that a number of artwork by Norwegian artist would soon enter the public domain under the Norwegian Copyright Act, the Oslo Municipality is seeking to register a number of artwork as trademark. The Norwegian Industrial property office (NIPO) rejected some application tout court, holding that the sign at issued lacked distinctive character or consisted of a shape that adds substantial value to the goods while in respect of other application registration was granted for certain types of goods and service. The Board Appeal decided to seek guidance on this point from EFTA court. In my view the most interesting part of the judgment is indeed the one concerning refusal of registration on public policy grounds.

The role of Copyright in Public Domain

With specific regard to copyright, the rationale

of having a limited duration is to serve the principle of legal certainty and protection of legitimate expectation, but is also functional to some extent to fulfilling the general interest in protecting creation of mind from commercial greed and ensuring the freedom of arts.

More specifically,

“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.”

Trademark for out of copyright works

Turning to consideration of the specific case at issue, the Court found that a trade mark based entirely on copyright-protected work presents “a certain risk of monopolization 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

Hence (in principle),

“The interest in safeguarding the public domain … speaks in favor of the absence of individual protection for, or exclusive rights to, the artwork on which the mark is based.”

The role of public policy/morality as an absolute ground for refusal

Turning to Article 3(1) (f) of the Trade Mark Directive, the EFTA Court noted that the absolute ground therein is somewhat more ‘absolute’ than Article 3(1)(e) in that it does not require consideration of the classes of goods and services for which registration is sought.

The Court then observed that Article 3(1) (f) refers to public policy and morality: while in certain cases these two limbs may overlap, these concepts are not synonyms:

“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.” In the present case, both public interest and morality could be at stake.