Some assembly required: CJEU clarifies when freedom of expression can justify trade mark use

The case concerned the use of the IKEA’s well-known trade marks by the Belgian political party Vlaams Belang in connection with its ‘IKEA PLAN’ on reforming asylum and immigration policy in Belgium. The party used IKEA trade marks to promote its ‘ready to assemble’ policy proposals. IKEA brought trade mark infringement proceedings, and it was accepted that the trade marks had been used without IKEA’s consent. The key issue was whether the use could be justified as ‘due cause’, because it formed part of the party’s exercise of freedom of expression.

The court’s decision

The Court of Justice held that the freedom of expression can, in principle, constitute ‘due cause’ and therefore can provide a defence to infringement of a trade mark. However, they cannot just rely on the freedom of expression defence. The user must identify specific reasons connected with that freedom and show that those reasons outweigh the trade marks owner’s rights and interests.

The court stated that when this defence is being considered, all relevant circumstances must be considered, including:

1. The intention of the third party. Was the trademark used in good faith? This especially needs to be considered when the sign is used:

(a)  To convey an idea or opinion relating to the trade mark, its proprietor, its commercial practices or its goods and services;
(b)  To initiate or fuel a debate in the public interest;
(c)  Because it is necessary for other reasons for the exercise of freedom in the given context (e.g., the linguistic meaning of an element of the trade mark, or the fact that it has become a public cultural reference or part of everyday language).

2. Whether the expression in question contributes to a public interest debate and whether or not that expression occurs in a strictly commercial context; and

3. The consequences that the third party’s use may entail for the trade mark proprietor or the substance of the exclusive rights conferred by its registration, with particular regard to:

(a)  the intensity, extent and methods of the use;
(b)  the scale of the mark’s reputation;
(c)  the degree of similarity between the sign used and the mark; and
(d)  where appropriate, the fact that the use may give the impression that the proprietor agrees with, or supports, the political message conveyed when its values are politically neutral or are incompatible with that message.

Although the court left the final determination to the Belgian court, it indicated that the defence was unlikely to succeed. While immigration policy was clearly a matter of public interest, it had no direct connection to IKEA or its products. Further, the repeated use of identical or highly similar IKEA branding could suggest IKEA endorsed the political message. The court considered that the use appeared primarily intended to benefit from the reputation of the IKEA brand rather than facilitate genuine expression.

Practical Implications

The decision confirms that freedom of expression may provide a defence to the infringement of trade marks, but only in limited circumstances. The burden rests on the user to justify why its expressive rights should prevail over the trade mark owners rights. The judgement is particularly significant for political campaigns and other forms of public commentary that use well-known brands. It also highlights the importance of considering whether the public may perceive a brand as endorsing a political message. Although not binding in the UK, the decision may be persuasive in future UK trade mark disputes involving freedom of expression arguments.