INTA Attempts to File Amicus Brief with CJEU in Preliminary Ruling Case

The case Inter IKEA Systems BV v. Algemeen Vlaams Belang vzw (C-298/23) concerns a Flemish political party that launched a campaign to promote new immigration measures under the title and acronym “IKEA,” standing for “Immigratie Kan Echt Anders,” which translates as “Immigration Really Can Be Different.” This political plan was presented to the public and the press—allegedly in a playful and parodistic manner—as an IKEA instruction manual, drawn in the iconic IKEA colors blue and yellow, as shown here:

Inter IKEA Systems BV (IKEA) filed a trademark infringement action in Belgium. Given that the defendant’s defense mainly relied on parody, the Belgian court referred the case to the Court of Justice of the European Union (CJEU), asking, in essence, whether and in what circumstances freedom of expression—including the freedom to express political opinions and political parody—may amount to a viable defense in trademark infringement cases by relying on the “due cause” exception under EU Trade Mark Regulation (EUTMR) Article 9(2)(c) or EU Trade Mark Delegated Regulation (EUTMDR) Articles 10(2)(c) and 10(6), and if so, what would be the criteria considered by the national court in assessing the balance between those fundamental rights, and what would be the importance attached to each of them (suggesting a list of relevant factors, including the extent to which the expression would have a commercial character or purpose and the degree of reputation of the trademark invoked).

INTA’s Amicus Brief (and Interventions in Preliminary Ruling Cases)

The CJEU’s procedural rules are very specific about the intervention by third parties: both the General Court and the CJEU allow a third party to file interventions in appeals cases, but such autonomous filings are not permitted in preliminary ruling cases. Instead, the only way to submit any interventions in preliminary ruling cases is through one of the parties to the pending court case.

Despite this procedural framework and given the significance of the legal questions to the INTA membership, the Association decided to nevertheless autonomously file an amicus brief in the above-mentioned case, which it did on September 5, 2023.

The Registrar of the CJEU acknowledged receipt of INTA’s brief and communicated in a letter dated September 9, 2023, that “it is not possible for third parties to participate in preliminary reference procedures” and advised that “as there is no provision in the Statute, or the rules of procedure, for submitting amicus curiae briefs, your document has not been treated.”

INTA’s Position

INTA’s intervention was aimed at preventing a broad interpretation of the “due cause” concept, allowing “parody” as a general fair use defense in trademark infringement cases, consistent with the position that it had taken during the legislative process of the EU Trade Mark Reform—objecting to the inclusion among the fair use exceptions of a provision allowing the use of a protected mark for purposes of parody, artistic expression, criticism, and comment.

In the introduction to its brief, INTA recalls that the “use in the course of trade, in relation to goods and services” is a prerequisite of trademark infringement claims within the EU, pointing out that the exposure to a conflict between the freedom of expression and trademark rights is significantly reduced thanks to this requirement. However, the referring court did not address this prerequisite, as the Benelux trademark law takes advantage of the “backdoor” of EUTMDR Article 10(6) to also bar trademark use other than in the course of trade, which is made without due cause and would take unfair advantage of or be detrimental to the distinctive character or the repute of the mark.

Moving to the core of the brief, INTA submitted that freedom of expression does not automatically secure non-infringement.

Taking into consideration the case law on both referential use and the limits of exhaustion, INTA maintains that the “due cause” exception calls firstly for a fairness assessment in the sense that a potential infringer shall always avoid causing unnecessary harm to the trademark concerned. Such harm may specifically arise if the addressed public comes to the false belief of a connection between the user and the owner of the trademark concerned.

INTA further suggests clearly distinguishing between parasitism and criticism. To this end, in INTA’s view, the test to be applied is whether the use of the relevant mark is related to the topic addressed by the user or whether it was chosen arbitrarily for the sole purpose of attracting the attention of the public, which otherwise would not occur.

Lastly, with regard to the parody test set forth in the CJEU case of September 3, 2014, C-201/13, Johan Deckmyn—according to which the relevant use must (i) evoke the original work, (ii) be notably different from it, and (iii) should constitute an expression of humor or mockery in preliminary ruling cases—INTA stresses that, even assuming that said test related to copyright cases was also applicable to trademark infringement cases, a parody defense would hardly come into play in the case at issue.

Although the CJEU could not formally consider INTA’s amicus brief, the Association believes that its attempt was imperative in order to share its opinion on the important legal issues at stake and concomitantly highlight the need for rules allowing autonomous interventions by third parties in preliminary ruling cases, as it already happens in appeal cases before both the General Court and the CJEU.

Read the Amicus Brief.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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