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1 August 2012

The right to freedom of expression is enshrined in Article 10 of the European Convention on Human Rights, in Article 11 of the Charter of the Fundamental Rights of the European Union; it is also a constitutional right of England.

Intellectual property is in turn protected by Article 17 of the Charter of Fundamental Rights and by Article 1 of the First Protocol to the ECHR; and whilst a monopoly right to use a mark for a particular good or service necessarily restricts the absolute freedom of speech, it is one of many such limitations proportionate and necessary in a democratic society. So freedom of expression does not extend in normal circumstances to allowing people to infringe trade marks. As Miss Sonia Proudman QC sitting as a Deputy Judge of the Chancery Division said in Patel v Allos,[Freedom of expression] is not unqualified, and must be balanced against the rights of others, such as... the rights of a trademark owner freely to enjoy its own rights and property… It is hardly free speech to use a domain name and trade marks that Internet users will (and are meant to) associate with Allos in order to trick those users.

However, in special circumstances, trade mark rights and the right to freedom of expression can conflict though as Mr Justice Pumfrey remarked in 2007, there has been little consideration of the matter in English law:

the scope of the intervention of Article 10 in matters concerning registered trade marks is far from well worked out. Indeed, I think it is fair to say that it is almost completely unworked out.

In light of that, to understand the interaction between freedom of expression and trade mark infringement, this article will consider the approach of the courts by first reviewing some well known cases from other jurisdictions and then considering the English courts approach.

Decisions in other jurisdictions

A lot of the better known cases outside England involving freedom of speech have seen it invoked as a defence in cases where a matter of public importance is being commented upon.

Pre-harmonisation of trade marks in the EU, the Bundesgerichtshof held that a public health campaign was allowed to parody cigarette advertising:

Precisely because the defendant tries, in its advertising, to divert attention from the dangers of smoking, it must put up with the plaintiff in return setting to work on its advertising slogan as intended and turning it round by satirical parody, so as to point to these dangers.

This approach has continued post-harmonisation. In Danone, the claimant took action against a protest site, jeboycottedanone.net. The Tribunal de Grande Instance de Paris said that whilst this domain name contained the claimants mark, it did not amount to infringement and the explicit use of jeboycotte meant there would be no confusion in the mind of the public. However, the court held that "responsibility is the correlative of every freedom", and the defendant was only entitled to implement "only the means strictly necessary for the satisfaction of the rightful aims pursued". In practice, this meant that using the defendants device marks amounted to trade mark infringement.

In Esso v Greenpeace, the Cour dAppel de Paris held that Greenpeaces use of EO, STOP ESSO, and E££O did not infringe Essos registered marks, and that Greenpeace were entitled "to denounce attacks on the environment and the risk to human health caused by certain industrial activities". In this case, the court emphasised that the defendant was not offering products for sale bearing the alleged infringements.

In contrast, in Laugh It Off v South African Breweries, the defendant had replaced "Black Label" with "Black Labour" and "Carling Beer" with "White Guilt" and sold this as a t-shirt. SAB were concerned about their mark being tarnished; the defendant claimed he had a right to freedom of expression. The Constitutional Court said that "Courts must be astute not to convert the anti-dilution safeguard of renowned trade marks usually controlled by powerful financial interests into a monopoly adverse to other claims of expressive conduct of at least equal cogency and worth in our broader society". On the facts, it found that as no likelihood of economic prejudice had been established, there was no infringement.

Similarly, in Plesner Joensen v Louis Vuitton the District Court of the Hague said that an artists use of Louis Vuittons registered design did not amount to infringement, as "artists enjoy a considerable protection with regard to their artistic freedom", and that Plesners use was plausibly not to free ride on Louis Vuittons reputation, but rather to pass on her message. It was not argued that Plesner suggested that LV was involved with the problems in Darfur, and the Court said that as Louis Vuitton was a "very well-known company", it "must accept critical use... to a stronger degree than other rightsholders".

The English Courts

The cases above concern the protection of free expression in relation to matters of public importance. This sort of case has not been fully considered in the English courts; but a reader of LOreal v Bellure, Miss World and Ate My Heart is left with the strong impression that the English courts consider this case to be persuasive authority.

In light of the ECJs judgment in Interflora v Marks & Spencer, Lord Justice Kitchin has said that there has been "development by the Court of Justice of its jurisprudence on the scope of Article 9(1)(c) of the Regulation", and that to establish infringement, "consideration must be given to whether the use is without due cause". Given this, the authors think that the English courts would be receptive to free speech defences in trade mark cases, as long as there no trade origin confusion.

What is less clear is the extent to which due cause would include use which is not necessary but just convenient. In Esso and Danone, it was clearly necessary for the defendants to use the particular marks of the companies they were criticising. In contrast, in Plesner, the design was convenient to use, but not necessary to the same extent as criticism was not being directly addressed in that case to the rightsholder. In this context, it is worth noting that in Unilever v Griffin, one of the reasons for awarding an injunction was that the potential infringement was not necessary for the defendants message.

Most of the cases in the English courts which have considered free speech have done so in a commercial context and in relation to interim injunctions. In previous cases the extent to which freedom of expression applies in commercial matters has been questioned. Mr Justice Pumfrey went so far as to say that

Absent a sign which is really telling a political story, making a political point or identifying some matter of public importance, I find the idea that use of a trade mark can of itself generally engage Art.10 of the Convention difficult.

However, the heartfelt judgment of Lord Justice Jacob in LOreal v Bellure shows that free speech is important in commerce:

EM>I am in favour of free speech - and most particularly where someone wishes to tell the truth. There is no good reason to dilute the predilection in cases where the speakers motive for telling the truth is his own commercial gain. Truth in the market place matters - even if it does not attract quite the strong emotions as the right of a journalist or politician to speak the truth.

And this emphasis on the importance of commercial free speech is also evident in Lord Justice Jacobs judgment in Boehringer Ingelheim, which sets out the test for interim injunctions in comparative advertising cases.

The Human Rights Act 1998 provides at Section 12(3) that a court cannot grant interim relief which might affect the right to freedom of expression unless it is "satisfied that the applicant is likely to establish that publication should not be allowed."

In Cream v Banerjee, Lord Nicholls explained that this means that "the general approach should be that courts will be exceedingly slow to make interim restraint orders where the applicant has not satisfied the court he will probably ("more likely than not") succeed at the trial.

The Court of Appeal has held that it is this test that should be applied in a comparative advertising case where freedom of expression is engaged:

A man who finds his trade mark disparaged by a rival trader in a comparative advertisement can obtain a prior restraining order only if he can show that it is more likely than not that the disparagement is wrong and misleading. Unless he can do that, then his rival, both for his own commercial interests and in the interests of the public, ought to be free to say that which he honestly believes.

If this hurdle is overcome, the courts then need to determine as usual where the balance of convenience lies.

When considering the balance of convenience, the court can consider the necessity of the trade mark infringement; in Unilever v Griffin, Arnold J held that the Claimant had good prima facie case in passing off and in copyright infringement; and whilst the Claimant said that association with the BNP could cause insidious and irreparable damage to the Claimant, the Court said that it was impossible to see why the BNP should need to use a picture of the Marmite jar as part of their political message. An injunction was therefore granted.

It should be noted that if the right to freedom of expression is not engaged, the standard American Cyanamid test for an injunction remains. An example of this is Ate My Heart v Mind Candy, where although the defendants Lady Goo Goo video game character started as a parody of Lady Gaga, she morphed into something different when she started being used as a character to enhance the commercial success of the Moshi Monsters brand, and to sell records. Accordingly, the case was very different from South African Breweries.

Practical advice and Conclusion

Trade mark owners should be careful about bringing cases where freedom of speech may be raised as a defence, because unless managed carefully, legal action can accentuate the glare of publicity. The SAB case ended with considerably more publicity being given to the defendants products than he would have otherwise obtained.

But if interim relief is possible (and any potential claimant should be mindful of Article 12), this can often decide a matter quickly and relatively cheaply, and with much less opportunity for fanfare.

From the limited number of cases to consider the relationship of trade mark infringement and freedom of speech, it may be concluded there is a developing jurisprudence in which the courts will take care to protect essential freedoms. The courts are aware of the need to strike the balance between allowing trade mark owners the right to assert a mark in order to protect its essential function with allowing others permissible parody or criticism.

This article was co-authored by Peter Ellis and Giles Parsons and was first published in Intellectual Property Magazine (September 2012).

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