Benelux: My brand is not there for your political speech

21 Jul 2017 , 10:54am

Brand reputation is one of the most valuable assets businesses own. Trade mark owners will want to avoid undesired political exploitation of their brand, but doing so can pose a challenge. Not so in the Benelux region, where trade mark laws help brands to combat such use, which can be particularly harmful in a world where political campaigns can quickly go viral.

Belgian voters were confronted with a political campaign from a right wing party featuring the slogan "Freedom or Islam?" next to a photograph of a long-legged woman wearing Louboutin shoes, with various slogans – ranging from "Sharia compliant" next to the bottom of her feet to "stoning" at the top of the thighs – illustrating the alleged repression of women by Islam.

Political parties are often tempted to include well-known trade marks in their campaigns, to make a political statement or simply to attract voters' attention. In the present case, the politician herself admitted choosing the luxurious Louboutin shoes to enhance the underlying social and cultural message of the campaign. Understandably, companies like Louboutin are not pleased with this undesired publicity. However, ending this undesired political exploitation of one's brand by enforcing trade mark rights can be difficult.

At European level and in many Member States, trade mark legislation only allows brand owners to enforce their rights where a mark is used in the course of trade. This legal hurdle cannot be overcome where a mark is used in a non-commercial political context. The implementation of the recent EU Trademark Package will not bring any solace in that regard.

But Benelux trade mark legislation provides for protection against non-commercial use of a mark other than for the purposes of distinguishing goods or services, where the use of that mark takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark without due cause.

Louboutin was able to put an end to this political campaign on the basis of that provision, and the Court considered that political exploitation of a mark – irrespective of the party or ideology at stake – is detrimental to a brand's reputation. Though it received broad support, the decision was criticized by some for having failed to take into consideration the right to freedom of expression as due cause for this use.

When limiting the right to freedom of speech, an assessment indeed needs to be made to determine whether the limitation is foreseen in the law, if it serves a legitimate purpose and if such restriction is necessary in a democratic society. A fair balance of interests is thus required between the trade mark holder's rights and the third party's right to freedom of speech. Nonetheless, at the moment, such a balance is not made in the Benelux and trademark protection consistently seems to hold the upper hand, to the advantage of brand owners.

When European marks are involved, the outcome is less favorable for trade mark owners. The well-known telecoms service provider O2 failed to prohibit the distribution by the same political party of a book and t-shirts featuring the sign "O2". In addition to the fact that this sign was used as the abbreviation for the element oxygen, the Court pointed out that there was no use of this sign in the course of trade, a prerequisite for a finding of trade mark infringement under European law.

These cases suggest that possession of a Benelux trade mark may be a useful addition to companies' trade mark portfolio, especially for owners of particularly well-known (luxury) brands which are more often the subject of political or other undesired exploitation, against which Benelux law gives a broad scope of protection.