• Moët Hennesy Champagne sued Belgian artist Cedric Peers for depicting bottles using the well-known shape and label of the Dom Pérignon champagne in certain artworks
  • The district court considered that Article 2.20(2)(d) of the Benelux IP Treaty needed clarification and referred the matter to the Benelux Court of Justice
  • The Benelux Court of Justice held that artistic freedom could justify the use of trademarks in certain circumstances

On 14 October 2019 the Benelux Court of Justice issued a decision on the use of a well-known trademark in a work of art (Case A 2018/1/8) (judgment in Dutch here; a French translation can be found at ‘www.courbeneluxhof.be’).

Background

Belgium, the Netherlands and Luxembourg form the Benelux Unie (‘Union’). In this context, the three countries join forces in respect of various subjects. In 1971 and 1976 the national laws on trademarks and designs were unified. The Benelux Gerechtshof (the Benelux Court of Justice) has the task of advising the national courts on matters of interpretation of the law. The Benelux laws subsequently served as an example for the EU trademark and design legislation.

The present case concerned artworks by Belgian painter Cedric Peers, in which he depicted champagne bottles using the well-known shape and label of the Dom Pérignon champagne. Peers describes his style as “contemporary, playing with pointillism and pop art” and claims to explore the boundaries between marketing and art.

Moët Hennesy Champagne Services (hereinafter ‘Hennesy’) owns EU trademark registrations for the various visual aspects of the Dom Pérignon bottle. Hennesy sued Cedric Art, Peers’ company, in the district court of Brussels for trademark infringement. Below are three pictures of the alleged infringing paintings (more can be found at ‘www.cedricgallery.com’):

According to the district court, these works had an ironical and sometimes erotic character. Cedric Art also offers for sale clothing bearing these “Dom Pérignon signs”. 

No doubt inspired by earlier cases in which an artist used a well-known trademark in their work, Cedric Art claimed that Peers could justify the use of Hennesy’s trademarks on the basis of the freedom of expression and, in particular, artistic freedom (as safeguarded under Article 10 of the European Human Rights Convention). The Benelux and EU trademark laws provide a justification for such alleged infringement (called “valid reason” in the Benelux and “due cause” in the European Union).  

The district court considered that the relevant article, Article 2.20(2)(d) of the Benelux IP Treaty (which is similar to Article 10(6) of the EU Trademark Directive), needed clarification and referred the matter to the Benelux Court of Justice. 

Benelux Court of Justice decision

First, the Benelux Court of Justice considered whether it could decide the case without referring a question to the Court of Justice of the European Union (CJEU). It found a precedent in the judgment of the CJEU in Leidseplein Beheer v Red Bull (Case C-65/12, 6 February 2014), in which the court interpreted the notion of ‘due cause’. It also referred to Recital 27 of the Trademark Directive (2015/2436).

The Benelux Court of Justice thus answered the question as follows:

Artistic freedom is a valid reason (within the meaning of Article 2.20(2)(d)) for the use of a sign that is identical or similar to a trademark other than for distinguishing goods or services, if the artistic expression is the original result of a creative design process that does not intend to cause damage to the trademark or the trademark holder.

The district court must now consider whether Peers can rely on his artistic freedom to justify his use of the Dom Pérignon marks.    

Paul Steinhauser

Paul Steinhauser

 This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe