On 29 August, the Court of Appeal in The Hague ruled that The Nightwatch can’t be registered as a trademark in the Benelux countries. It concluded that, due to the specific importance of the painting, consumers would not perceive it as a trademark. Therefore it lacks distinctiveness. 

OLD MASTERS

The lawsuit was filed as a test case by trademark consultancy Chiever due to that fact that in recent years companies have increasingly been using old, famous art, of which copyrights have expired, to promote their products. These companies regularly are seeking advice to know if there are any risks involved and whether they can protect their use of these works of art by means of a trademark registration. Chiever decided to find out by bringing a case before the Court of Appeal in The Hague.

NOT DISTINCTIVE & NO JUSTIFIED INTEREST

The Court’s decision upholds the original refusal of Chiever’s application by the Benelux Office for Intellectual Property (BOIP). As well as concluding that The Nightwatch isn’t distinctive, the Court of Appeal also said Chiever had no justified interest in the case.

DISAPPOINTMENT

Naturally, this decision is a disappointment to us. We believe the Court of Appeal’s opinion that Chiever has no justified interest in the case undervalues the fact that companies using well-known works of art on their products have key questions they need answering.

NIGHTWATCH DID GET EU TRADEMARK PROTECTION

Oddly enough, the Court of Appeal attaches no value to the fact that the European Trademark Office EUIPO díd accept The Nightwatch as a trademark. On 2 August 2017, Chiever received the official registration certificate stating that the trademark is protected throughout the EU (and hence also in the Benelux countries!). This contradictory outcome is impossible to explain to companies that use famous, old art to promote their products and it will lead to uncertainty.

PUBLIC POLICY

The ruling similarly fails to address the fact that the BOIP also rejected the application on grounds of public policy, arguing that it is unacceptable for a commercial entity to try to claim ownership of an item of cultural heritage through trademark law. This is an interesting and arguably valid point which again puts the BIOP directly at odds with the EUIPO, given that the latter unreservedly accepts items of cultural heritage as trademarks. Unfortunately, the Court of Appeal ruling of 29 August address this point.