Trademark law

Trademark Law as Regulation of Expression: Why Article 10 ECHR Should Become the Internal Grammar of European Trademark Law external link

2026

Abstract

This chapter argues that European trademark law increasingly operates as a system of expression regulation and should therefore be reconstructed in light of Article 10 ECHR. Trademark law no longer merely protects consumers against deception: through anti-dilution protection, expansive infringement standards, and morality-based registration rules, it increasingly governs the circulation of cultural and political meanings attached to trademarks, which themselves have become communicative resources used in parody, artistic appropriation, political criticism, activism, journalism, and public debate. The chapter first identifies the two principal contexts in which these tensions arise: restrictions on expressive reuse of trademarks and refusals to register allegedly immoral or offensive signs. It then analyses the Article 10 principles most relevant to trademark law, focusing on the listener-oriented structure of freedom of expression and its implications for confusion-based and anti-dilution protection; the constitutional treatment of commercial speech and the dangers of overly broad conceptions of “commerciality”; the heightened protection afforded to speech on matters of public interest; the protection of artistic expression, satire, and humour; the broader tolerance required for criticism of powerful corporate actors; and the contextual protection of offensive or provocative expression. Building on this framework, the chapter argues that freedom of expression should not remain an external defence applied only after infringement has been established. Instead, Article 10 values should shape trademark doctrine internally, including the interpretation of use in the course of trade, use in relation to goods or services, anti-dilution protection, due cause, and morality or public-order exclusions. It concludes that trademark law can retain its legitimate market-regulating role only if Article 10 ECHR becomes part of its internal doctrinal structure.

Links

https://papers.ssrn.com/sol3/papers.cfm?abstract_id=6805099

Art. 10 EVRM, Freedom of expression, Trademark law

RIS

TY  - UNPD
AU  - Izyumenko, E.
PY  - 2026
DA  - 2026-05-20
T1  - Trademark Law as Regulation of Expression: Why Article 10 ECHR Should Become the Internal Grammar of European Trademark Law
AB  - This chapter argues that European trademark law increasingly operates as a system of expression regulation and should therefore be reconstructed in light of Article 10 ECHR. Trademark law no longer merely protects consumers against deception: through anti-dilution protection, expansive infringement standards, and morality-based registration rules, it increasingly governs the circulation of cultural and political meanings attached to trademarks, which themselves have become communicative resources used in parody, artistic appropriation, political criticism, activism, journalism, and public debate.

The chapter first identifies the two principal contexts in which these tensions arise: restrictions on expressive reuse of trademarks and refusals to register allegedly immoral or offensive signs. It then analyses the Article 10 principles most relevant to trademark law, focusing on the listener-oriented structure of freedom of expression and its implications for confusion-based and anti-dilution protection; the constitutional treatment of commercial speech and the dangers of overly broad conceptions of “commerciality”; the heightened protection afforded to speech on matters of public interest; the protection of artistic expression, satire, and humour; the broader tolerance required for criticism of powerful corporate actors; and the contextual protection of offensive or provocative expression. Building on this framework, the chapter argues that freedom of expression should not remain an external defence applied only after infringement has been established. Instead, Article 10 values should shape trademark doctrine internally, including the interpretation of use in the course of trade, use in relation to goods or services, anti-dilution protection, due cause, and morality or public-order exclusions. It concludes that trademark law can retain its legitimate market-regulating role only if Article 10 ECHR becomes part of its internal doctrinal structure.
K1  - Art. 10 EVRM
K1  - Freedom of expression
K1  - Trademark law
ER  -

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Bibtex

Working paper{nokey,
	title = {Trademark Law as Regulation of Expression: Why Article 10 ECHR Should Become the Internal Grammar of European Trademark Law},
	author = {Izyumenko, E.},
	url = {https://papers.ssrn.com/sol3/papers.cfm?abstract_id=6805099},
	year = {2026},
	date = {2026-05-20},
	abstract = {This chapter argues that European trademark law increasingly operates as a system of expression regulation and should therefore be reconstructed in light of Article 10 ECHR. Trademark law no longer merely protects consumers against deception: through anti-dilution protection, expansive infringement standards, and morality-based registration rules, it increasingly governs the circulation of cultural and political meanings attached to trademarks, which themselves have become communicative resources used in parody, artistic appropriation, political criticism, activism, journalism, and public debate.

The chapter first identifies the two principal contexts in which these tensions arise: restrictions on expressive reuse of trademarks and refusals to register allegedly immoral or offensive signs. It then analyses the Article 10 principles most relevant to trademark law, focusing on the listener-oriented structure of freedom of expression and its implications for confusion-based and anti-dilution protection; the constitutional treatment of commercial speech and the dangers of overly broad conceptions of “commerciality”; the heightened protection afforded to speech on matters of public interest; the protection of artistic expression, satire, and humour; the broader tolerance required for criticism of powerful corporate actors; and the contextual protection of offensive or provocative expression. Building on this framework, the chapter argues that freedom of expression should not remain an external defence applied only after infringement has been established. Instead, Article 10 values should shape trademark doctrine internally, including the interpretation of use in the course of trade, use in relation to goods or services, anti-dilution protection, due cause, and morality or public-order exclusions. It concludes that trademark law can retain its legitimate market-regulating role only if Article 10 ECHR becomes part of its internal doctrinal structure.},
	keywords = {Art. 10 EVRM, Freedom of expression, Trademark law},
}

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Trademark Law and Political Expression: The Case of IKEA v. Vlaams Belang and Beyond external link

Izyumenko, E.

IIC, 2026

Abstract

This article offers a comprehensive exploration of the evolving interface between trademark law and freedom of political expression in Europe, using the CJEU case IKEA v. Vlaams Belang as a focal but not exhaustive case study. It argues that the dispute exemplifies a much broader and increasingly urgent structural question: how EU trademark law – especially in its protection of reputed marks – can be reconciled with the constitutional commitments to political speech, artistic creativity, and democratic participation embedded in Article 10 of the European Convention on Human Rights (ECHR) and Article 11 of the EU Charter. Against a backdrop of the expanding preliminary infringement criteria of “use in the course of trade” and “use in relation to goods or services”, as well as the uniquely far-reaching Benelux “super anti-dilution” regime, the article demonstrates that “due cause” has become the principal doctrinal locus for internalising freedom-of-expression concerns within trademark law. Drawing on Strasbourg jurisprudence, it develops a holistic framework for a free-speech-conforming interpretation of “due cause”, analysing both the criteria suggested by the Belgian referring court and additional factors central to the European Court of Human Rights’ proportionality review, including commerciality, the value of political speech and artistic expression, the reputation of the mark and the power of corporate symbols, availability of alternatives, tolerance for offensive expression, the limits imposed by hate speech, and the compelled speech doctrine. The article concludes that failing to interpret “due cause” in a speech-sensitive way would risk enabling trademark rights to override core democratic freedoms.

Links

Freedom of expression, Political speech, Trademark law

RIS

TY  - JOUR
AU  - Izyumenko, E.
PY  - 2026
DA  - 2026-05-12
T1  - Trademark Law and Political Expression: The Case of IKEA v. Vlaams Belang and Beyond
JO  - IIC
UR  - https://link.springer.com/article/10.1007/s40319-026-01719-4
DO  - https://doi.org/10.1007/s40319-026-01719-4
AB  - This article offers a comprehensive exploration of the evolving interface between trademark law and freedom of political expression in Europe, using the CJEU case IKEA v. Vlaams Belang as a focal but not exhaustive case study. It argues that the dispute exemplifies a much broader and increasingly urgent structural question: how EU trademark law – especially in its protection of reputed marks – can be reconciled with the constitutional commitments to political speech, artistic creativity, and democratic participation embedded in Article 10 of the European Convention on Human Rights (ECHR) and Article 11 of the EU Charter. Against a backdrop of the expanding preliminary infringement criteria of “use in the course of trade” and “use in relation to goods or services”, as well as the uniquely far-reaching Benelux “super anti-dilution” regime, the article demonstrates that “due cause” has become the principal doctrinal locus for internalising freedom-of-expression concerns within trademark law. Drawing on Strasbourg jurisprudence, it develops a holistic framework for a free-speech-conforming interpretation of “due cause”, analysing both the criteria suggested by the Belgian referring court and additional factors central to the European Court of Human Rights’ proportionality review, including commerciality, the value of political speech and artistic expression, the reputation of the mark and the power of corporate symbols, availability of alternatives, tolerance for offensive expression, the limits imposed by hate speech, and the compelled speech doctrine. The article concludes that failing to interpret “due cause” in a speech-sensitive way would risk enabling trademark rights to override core democratic freedoms.
K1  - Freedom of expression
K1  - Political speech
K1  - Trademark law
ER  -

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Bibtex

Article{nokey,
	title = {Trademark Law and Political Expression: The Case of IKEA v. Vlaams Belang and Beyond},
	author = {Izyumenko, E.},
	doi = {https://doi.org/10.1007/s40319-026-01719-4},
	year = {2026},
	date = {2026-05-12},
	journal = {IIC},
	abstract = {This article offers a comprehensive exploration of the evolving interface between trademark law and freedom of political expression in Europe, using the CJEU case IKEA v. Vlaams Belang as a focal but not exhaustive case study. It argues that the dispute exemplifies a much broader and increasingly urgent structural question: how EU trademark law – especially in its protection of reputed marks – can be reconciled with the constitutional commitments to political speech, artistic creativity, and democratic participation embedded in Article 10 of the European Convention on Human Rights (ECHR) and Article 11 of the EU Charter. Against a backdrop of the expanding preliminary infringement criteria of “use in the course of trade” and “use in relation to goods or services”, as well as the uniquely far-reaching Benelux “super anti-dilution” regime, the article demonstrates that “due cause” has become the principal doctrinal locus for internalising freedom-of-expression concerns within trademark law. Drawing on Strasbourg jurisprudence, it develops a holistic framework for a free-speech-conforming interpretation of “due cause”, analysing both the criteria suggested by the Belgian referring court and additional factors central to the European Court of Human Rights’ proportionality review, including commerciality, the value of political speech and artistic expression, the reputation of the mark and the power of corporate symbols, availability of alternatives, tolerance for offensive expression, the limits imposed by hate speech, and the compelled speech doctrine. The article concludes that failing to interpret “due cause” in a speech-sensitive way would risk enabling trademark rights to override core democratic freedoms.},
	keywords = {Freedom of expression, Political speech, Trademark law},
}

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Is Upcycling Always Green – and Should It Be? Reconsidering the Rationale for Accommodating Upcycling within IP Law and Leveraging the Potential of Quotation and ‘Due Cause’ external link

Izyumenko, E.

2026

Abstract

Climate change has forced legal systems to question many of their long-standing assumptions, including the largely linear logic that continues to underpin intellectual property (IP) law. Existing scholarship has convincingly shown that copyright and trade mark laws often hinder circular practices such as repair and upcycling, prompting calls for greater flexibility or the ‘greenification’ of IP law. This article challenges a key premise of those proposals: that upcycling is inherently environmentally beneficial. The environmental value of upcycling is neither uniform nor self-evident, and in some contexts may be marginal or even adverse. This uncertainty raises a normative question: should accommodation of upcycling under IP law depend on demonstrated environmental benefit, or does upcycling embody a wider social value warranting protection irrespective of ecological impact? The article argues for the latter, developing a justificatory framework grounded not primarily in environmental sustainability, but in artistic freedom and cultural diversity. On this account, environmental benefits – where present – serve as reinforcing considerations rather than the foundation for legal reform. Building on this reframing, the article reassesses concerns about free-riding on IP holders’ rights and argues for a more calibrated balance between upcycling practices and the protection of legitimate IP interests. It then examines how this balance might be realised within existing EU IP law, focusing on the underexplored potential of the quotation exception in copyright law and the ‘due cause’ defence in trade mark law. By repositioning these defences within the sustainability discourse, the article seeks to broaden the tools available to courts and policymakers for aligning IP law with the social value of upcycling.

Links

https://papers.ssrn.com/sol3/papers.cfm?abstract_id=6176840

Copyright, Freedom of expression, Trademark law, upcycling

RIS

TY  - UNPD
AU  - Izyumenko, E.
PY  - 2026
DA  - 2026-02-04
T1  - Is Upcycling Always Green – and Should It Be? Reconsidering the Rationale for Accommodating Upcycling within IP Law and Leveraging the Potential of Quotation and ‘Due Cause’
AB  - Climate change has forced legal systems to question many of their long-standing assumptions, including the largely linear logic that continues to underpin intellectual property (IP) law. Existing scholarship has convincingly shown that copyright and trade mark laws often hinder circular practices such as repair and upcycling, prompting calls for greater flexibility or the ‘greenification’ of IP law. This article challenges a key premise of those proposals: that upcycling is inherently environmentally beneficial. The environmental value of upcycling is neither uniform nor self-evident, and in some contexts may be marginal or even adverse.

This uncertainty raises a normative question: should accommodation of upcycling under IP law depend on demonstrated environmental benefit, or does upcycling embody a wider social value warranting protection irrespective of ecological impact? The article argues for the latter, developing a justificatory framework grounded not primarily in environmental sustainability, but in artistic freedom and cultural diversity. On this account, environmental benefits – where present – serve as reinforcing considerations rather than the foundation for legal reform.

Building on this reframing, the article reassesses concerns about free-riding on IP holders’ rights and argues for a more calibrated balance between upcycling practices and the protection of legitimate IP interests. It then examines how this balance might be realised within existing EU IP law, focusing on the underexplored potential of the quotation exception in copyright law and the ‘due cause’ defence in trade mark law. By repositioning these defences within the sustainability discourse, the article seeks to broaden the tools available to courts and policymakers for aligning IP law with the social value of upcycling.
K1  - Copyright
K1  - Freedom of expression
K1  - Trademark law
K1  - upcycling
ER  -

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Bibtex

Working paper{nokey,
	title = {Is Upcycling Always Green – and Should It Be? Reconsidering the Rationale for Accommodating Upcycling within IP Law and Leveraging the Potential of Quotation and ‘Due Cause’},
	author = {Izyumenko, E.},
	url = {https://papers.ssrn.com/sol3/papers.cfm?abstract_id=6176840},
	year = {2026},
	date = {2026-02-04},
	abstract = {Climate change has forced legal systems to question many of their long-standing assumptions, including the largely linear logic that continues to underpin intellectual property (IP) law. Existing scholarship has convincingly shown that copyright and trade mark laws often hinder circular practices such as repair and upcycling, prompting calls for greater flexibility or the ‘greenification’ of IP law. This article challenges a key premise of those proposals: that upcycling is inherently environmentally beneficial. The environmental value of upcycling is neither uniform nor self-evident, and in some contexts may be marginal or even adverse.

This uncertainty raises a normative question: should accommodation of upcycling under IP law depend on demonstrated environmental benefit, or does upcycling embody a wider social value warranting protection irrespective of ecological impact? The article argues for the latter, developing a justificatory framework grounded not primarily in environmental sustainability, but in artistic freedom and cultural diversity. On this account, environmental benefits – where present – serve as reinforcing considerations rather than the foundation for legal reform.

Building on this reframing, the article reassesses concerns about free-riding on IP holders’ rights and argues for a more calibrated balance between upcycling practices and the protection of legitimate IP interests. It then examines how this balance might be realised within existing EU IP law, focusing on the underexplored potential of the quotation exception in copyright law and the ‘due cause’ defence in trade mark law. By repositioning these defences within the sustainability discourse, the article seeks to broaden the tools available to courts and policymakers for aligning IP law with the social value of upcycling.},
	keywords = {Copyright, Freedom of expression, Trademark law, upcycling},
}

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Postkantoor in Iceland: On a margin of appreciation for European IP Offices in assessing the descriptiveness of trademarks download

Westenbroek, T.F.

Berichten Industriële Eigendom, iss. : 5, pp: 194-201, 2025

Links

Westenbroek Postkantoor in Iceland BIE 2025_5

margin of appreciation, Trademark law

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Freedom of Political Expression and the Limits of Trademark Power: IKEA v. Vlaams Belang external link

Izyumenko, E.

Human Rights Here, 2025

Links

https://www.humanrightshere.com/post/freedom-of-political-expression-and-the-limits-of-trademark-power-ikea-v-vlaams-belang

Freedom of expression, Trademark law

RIS

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Fashion Upcycling and Trademark Infringement: A Circular Economy/Freedom of the Arts Approach download

Senftleben, M.

In: Tan D, Fromer J, Gangjee D, eds. Fashion and Intellectual Property, Cambridge University Press, 2025, pp: 217-251, ISBN: 9781009519618

Abstract

Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing: using second-hand garments as raw materials for new creations, upcyclers can ransform used pieces of clothing into new fashion products that may become even more sought-after than the source material. Considering the overarching policy objective to ensure a circular economy, the use of trademark-protected fashion elements for upcycling purpose can be qualified as a particularly important form of artistic expression. The reference to products of the original trademark owner is made for the socially valuable purpose of providing a vision of better, more sustainable production and consumption practices.

Links

Fashion, infringement, Trademark law, upcycling

RIS

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Bibtex

Chapter{nokey,
	title = {Fashion Upcycling and Trademark Infringement: A Circular Economy/Freedom of the Arts Approach},
	author = {Senftleben, M.},
	url = {https://www.ivir.nl/publications/fashion-upcycling-and-trademark-infringement/fashion_upcycling_and_trademark_infringement/},
	doi = {https://doi.org/10.1017/9781009519618},
	year = {2025},
	date = {2025-10-27},
	pages = {217-251},
	abstract = {Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing: using second-hand garments as raw materials for new creations, upcyclers can ransform used pieces of clothing into new fashion products that may become even more sought-after than the source material. Considering the overarching policy objective to ensure a circular economy, the use of trademark-protected fashion elements for upcycling purpose can be qualified as a particularly important form of artistic expression. The reference to products of the original trademark owner is made for the socially valuable purpose of providing a vision of better, more sustainable production and consumption practices.},
	keywords = {Fashion, infringement, Trademark law, upcycling},
}

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Freedom of Political Expression as “Due Cause”: The Pending IKEA v. Vlaams Belang Case Before the CJEU external link

Izyumenko, E.

Kluwer Trademark Blog, 2025

Abstract

The pending IKEA v. Vlaams Belang case before the CJEU offers a key test of how freedom of expression (FoE) interacts with EU trademark law. IKEA sued the Belgian party Vlaams Belang for parodying its name, logo, and colours in a campaign titled “IKEA Plan” (Immigratie Kan Echt Anders—“Immigration Really Can Be Different”). The Belgian Enterprise Court asked the CJEU whether such political parody can constitute “due cause” under EU trademark rules and, if so, which factors should guide that assessment. The hearing took place in June 2025, with the Advocate General’s Opinion expected on 13 November 2025. This post considers the FoE factors identified by the Belgian court—rooted in ECtHR case-law—and their role in the proportionality analysis.

Links

https://legalblogs.wolterskluwer.com/trademark-blog/freedom-of-political-expression-as-due-cause-the-pending-ikea-v-vlaams-belang-case-before-the-cjeu/

Freedom of expression, Politics, Trademark law

RIS

TY  - BLOG
AU  - Izyumenko, E.
PY  - 2025
DA  - 2025-10-14
T1  - Freedom of Political Expression as “Due Cause”: The Pending IKEA v. Vlaams Belang Case Before the CJEU
JO  - Kluwer Trademark Blog
AB  - The pending IKEA v. Vlaams Belang case before the CJEU offers a key test of how freedom of expression (FoE) interacts with EU trademark law. IKEA sued the Belgian party Vlaams Belang for parodying its name, logo, and colours in a campaign titled “IKEA Plan” (Immigratie Kan Echt Anders—“Immigration Really Can Be Different”). The Belgian Enterprise Court asked the CJEU whether such political parody can constitute “due cause” under EU trademark rules and, if so, which factors should guide that assessment. The hearing took place in June 2025, with the Advocate General’s Opinion expected on 13 November 2025. This post considers the FoE factors identified by the Belgian court—rooted in ECtHR case-law—and their role in the proportionality analysis.
K1  - Freedom of expression
K1  - Politics
K1  - Trademark law
ER  -

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Bibtex

Online publication{nokey,
	title = {Freedom of Political Expression as “Due Cause”: The Pending IKEA v. Vlaams Belang Case Before the CJEU},
	author = {Izyumenko, E.},
	url = {https://legalblogs.wolterskluwer.com/trademark-blog/freedom-of-political-expression-as-due-cause-the-pending-ikea-v-vlaams-belang-case-before-the-cjeu/},
	year = {2025},
	date = {2025-10-14},
	journal = {Kluwer Trademark Blog},
	abstract = {The pending IKEA v. Vlaams Belang case before the CJEU offers a key test of how freedom of expression (FoE) interacts with EU trademark law. IKEA sued the Belgian party Vlaams Belang for parodying its name, logo, and colours in a campaign titled “IKEA Plan” (Immigratie Kan Echt Anders—“Immigration Really Can Be Different”). The Belgian Enterprise Court asked the CJEU whether such political parody can constitute “due cause” under EU trademark rules and, if so, which factors should guide that assessment. The hearing took place in June 2025, with the Advocate General’s Opinion expected on 13 November 2025. This post considers the FoE factors identified by the Belgian court—rooted in ECtHR case-law—and their role in the proportionality analysis.},
	keywords = {Freedom of expression, Politics, Trademark law},
}

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Fashion Upcycling as Protected Free Speech in Trademark Law external link

Senftleben, M.

University of Miami International and Comparative Law Review, vol. 31, iss. : 2, pp: 349-387, 2024

Abstract

Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing. Using second-hand garments as raw material for new creations, upcyclers transform used pieces of clothing into new fashion products that may become even more sought-after than the original source material. The more fashion elements enjoy trademark protection; however, the more legal obstacles arise. Fashion upcycling may trigger allegations of consumer confusion, brand dilution, and unfair freeriding. As the Introduction will explain, the exhaustion of trademark rights after the first sale does not necessarily dispel concerns about trademark infringement. The rearrangement of branded garment components in the upcycling process may render the first sale doctrine inapplicable and give the trademark proprietor ammunition to oppose the resale. Against this background, the analysis explores other strategies to assure fashion upcyclers that, as long as they do not specifically aim at misleading consumers or damaging and exploiting protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. To lay groundwork for this approach, Section I focuses on trademark theory that stresses the need to develop a specific set of rules capable of shielding the expressive use of trademarks against allegations of trademark infringement. In the light of cultural sciences, Section II demonstrates that fashion upcycling constitutes a specific form of artistic speech – and a specific form of expressive trademark use – that has particular societal value in the current environmental crisis. It offers a vision of alternative, more sustainable production and consumption patterns. Therefore, fashion upcycling should benefit from breathing space for free speech in trademark law. Taking this insight as a starting point, Section III discusses two avenues for supporting fashion upcycling in trademark contexts: first, the option of adopting a strict test of use as a trademark that could immunize sustainable fashion reuse from allegations of trademark infringement on the ground that consumers will understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. Second, the option of strengthening defenses, in particular the referential use defense, by developing labelling guidelines that allow upcyclers to ensure compliance with the requirement of honest practices in industrial or commercial matters. The Conclusion offers concluding remarks. The EU trademark system – the Trade Mark Regulation (“EUTMR”) and the Trade Mark Directive (“TMD”) – will serve as a reference point for the discussion.

Links

Fashion, Freedom of Speech, Trademark law

RIS

TY  - JOUR
AU  - Senftleben, M.
PY  - 2024
DA  - 2024-04-06
T1  - Fashion Upcycling as Protected Free Speech in Trademark Law
JO  - University of Miami International and Comparative Law Review
VL  - 31
IS  - 2
SP  - 349-387
UR  - https://www.ivir.nl/publications/fashion-upcycling-as-protected-free-speech-in-trademark-law/fashion-upcycling-protected-free-speech/
AB  - Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing. Using second-hand garments as raw material for new creations, upcyclers transform used pieces of clothing into new fashion products that may become even more sought-after than the original source material. The more fashion elements enjoy trademark protection; however, the more legal obstacles arise. Fashion upcycling may trigger allegations of consumer confusion, brand dilution, and unfair freeriding. As the Introduction will explain, the exhaustion of trademark rights after the first sale does not necessarily dispel concerns about trademark infringement. The rearrangement of branded garment components in the upcycling process may render the first sale doctrine inapplicable and give the trademark proprietor ammunition to oppose the resale. Against this background, the analysis explores other strategies to assure fashion upcyclers that, as long as they do not specifically aim at misleading consumers or damaging and exploiting protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. To lay groundwork for this approach, Section I focuses on trademark theory that stresses the need to develop a specific set of rules capable of shielding the expressive use of trademarks against allegations of trademark infringement. In the light of cultural sciences, Section II demonstrates that fashion upcycling constitutes a specific form of artistic speech – and a specific form of expressive trademark use – that has particular societal value in the current environmental crisis. It offers a vision of alternative, more sustainable production and consumption patterns. Therefore, fashion upcycling should benefit from breathing space for free speech in trademark law. Taking this insight as a starting point, Section III discusses two avenues for supporting fashion upcycling in trademark contexts: first, the option of adopting a strict test of use as a trademark that could immunize sustainable fashion reuse from allegations of trademark infringement on the ground that consumers will understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. Second, the option of strengthening defenses, in particular the referential use defense, by developing labelling guidelines that allow upcyclers to ensure compliance with the requirement of honest practices in industrial or commercial matters. The Conclusion offers concluding remarks. The EU trademark system – the Trade Mark Regulation (“EUTMR”) and the Trade Mark Directive (“TMD”) – will serve as a reference point for the discussion.
K1  - Fashion
K1  - Freedom of Speech
K1  - Trademark law
ER  -

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Bibtex

Article{nokey,
	title = {Fashion Upcycling as Protected Free Speech in Trademark Law},
	author = {Senftleben, M.},
	year = {2024},
	date = {2024-04-06},
	journal = {University of Miami International and Comparative Law Review},
	volume = {31},
	issue = {2},
	pages = {349-387},
	abstract = {Fashion upcycling offers unprecedented opportunities for the sustainable reuse of clothing. Using second-hand garments as raw material for new creations, upcyclers transform used pieces of clothing into new fashion products that may become even more sought-after than the original source material. The more fashion elements enjoy trademark protection; however, the more legal obstacles arise. Fashion upcycling may trigger allegations of consumer confusion, brand dilution, and unfair freeriding. As the Introduction will explain, the exhaustion of trademark rights after the first sale does not necessarily dispel concerns about trademark infringement. The rearrangement of branded garment components in the upcycling process may render the first sale doctrine inapplicable and give the trademark proprietor ammunition to oppose the resale. Against this background, the analysis explores other strategies to assure fashion upcyclers that, as long as they do not specifically aim at misleading consumers or damaging and exploiting protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. To lay groundwork for this approach, Section I focuses on trademark theory that stresses the need to develop a specific set of rules capable of shielding the expressive use of trademarks against allegations of trademark infringement. In the light of cultural sciences, Section II demonstrates that fashion upcycling constitutes a specific form of artistic speech – and a specific form of expressive trademark use – that has particular societal value in the current environmental crisis. It offers a vision of alternative, more sustainable production and consumption patterns. Therefore, fashion upcycling should benefit from breathing space for free speech in trademark law. Taking this insight as a starting point, Section III discusses two avenues for supporting fashion upcycling in trademark contexts: first, the option of adopting a strict test of use as a trademark that could immunize sustainable fashion reuse from allegations of trademark infringement on the ground that consumers will understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. Second, the option of strengthening defenses, in particular the referential use defense, by developing labelling guidelines that allow upcyclers to ensure compliance with the requirement of honest practices in industrial or commercial matters. The Conclusion offers concluding remarks. The EU trademark system – the Trade Mark Regulation (“EUTMR”) and the Trade Mark Directive (“TMD”) – will serve as a reference point for the discussion.},
	keywords = {Fashion, Freedom of Speech, Trademark law},
}

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Developing Defences for Fashion Upcycling in EU Trademark Law

Senftleben, M.

GRUR International, 2023

Abstract

Trademarked fashion items pose a particular obstacle to reuse projects in the circular economy. By granting broad exclusive rights, EU trademark law exposes sustainable reuse practices, such as upcycling, to allegations of infringement ranging from (post-sale) confusion to blurring, tarnishment and unfair freeriding. Against that background, this analysis explores strategies to assure fashion re-users that, as long as they do not specifically aim to mislead consumers or damage and exploit protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. Two options for enhancing legal certainty will be explored: the first consists in adopting a strict test for ‘use as a trademark’ that could immunise sustainable fashion reuse against allegations of trademark infringement on the ground that consumers understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. The second option involves strengthening defences, in particular the referential use defence, by developing labelling guidelines that allow fashion re-users to ensure compliance with the requirement of honest practices in industrial or commercial matters.

Links

DOI: https://doi.org/10.1093/grurint/ikad131

Fashion, Trademark law

RIS

TY  - JOUR
AU  - Senftleben, M.
PY  - 2023
DA  - 2023-12-21
T1  - Developing Defences for Fashion Upcycling in EU Trademark Law
JO  - GRUR International
DO  - https://doi.org/10.1093/grurint/ikad131
AB  - Trademarked fashion items pose a particular obstacle to reuse projects in the circular economy. By granting broad exclusive rights, EU trademark law exposes sustainable reuse practices, such as upcycling, to allegations of infringement ranging from (post-sale) confusion to blurring, tarnishment and unfair freeriding. Against that background, this analysis explores strategies to assure fashion re-users that, as long as they do not specifically aim to mislead consumers or damage and exploit protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. Two options for enhancing legal certainty will be explored: the first consists in adopting a strict test for ‘use as a trademark’ that could immunise sustainable fashion reuse against allegations of trademark infringement on the ground that consumers understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. The second option involves strengthening defences, in particular the referential use defence, by developing labelling guidelines that allow fashion re-users to ensure compliance with the requirement of honest practices in industrial or commercial matters.
K1  - Fashion
K1  - Trademark law
ER  -

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Bibtex

Article{nokey,
	title = {Developing Defences for Fashion Upcycling in EU Trademark Law},
	author = {Senftleben, M.},
	doi = {https://doi.org/10.1093/grurint/ikad131},
	year = {2023},
	date = {2023-12-21},
	journal = {GRUR International},
	abstract = {Trademarked fashion items pose a particular obstacle to reuse projects in the circular economy. By granting broad exclusive rights, EU trademark law exposes sustainable reuse practices, such as upcycling, to allegations of infringement ranging from (post-sale) confusion to blurring, tarnishment and unfair freeriding. Against that background, this analysis explores strategies to assure fashion re-users that, as long as they do not specifically aim to mislead consumers or damage and exploit protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. Two options for enhancing legal certainty will be explored: the first consists in adopting a strict test for ‘use as a trademark’ that could immunise sustainable fashion reuse against allegations of trademark infringement on the ground that consumers understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. The second option involves strengthening defences, in particular the referential use defence, by developing labelling guidelines that allow fashion re-users to ensure compliance with the requirement of honest practices in industrial or commercial matters.},
	keywords = {Fashion, Trademark law},
}

Save .bib

Trademark Law, AI-driven Behavioral Advertising, and the Digital Services Act: Toward Source and Parameter Transparency for Consumers, Brand Owners and Competitors external link

Senftleben, M.

Research Handbook on Intellectual Property and Artificial Intelligence, Edward Elgar Publishing, 2022, pp: 309-324, ISBN: 9781800881891

Abstract

In its Proposal for a Digital Services Act (“DSA”), the European Commission highlighted the need for new transparency obligations to arrive at accountable digital services, ensure a fair environment for economic operators and empower consumers. However, the proposed new rules seem to focus on transparency measures for consumers. According to the DSA Proposal, platforms, such as online marketplaces, must ensure that platform users receive information enabling them to understand when and on whose behalf an advertisement is displayed, and which parameters are used to direct advertising to them, including explanations of the logic underlying systems for targeted advertising. Statements addressing the interests of trademark owners and trademark policy are sought in vain. Against this background, the analysis sheds light on AI-driven behavioural advertising practices and the policy considerations underlying the proposed new transparency obligations. In the light of the debate on trademark protection in keyword advertising cases, it will show that not only consumers but also trademark owners have a legitimate interest in receiving information on the parameters that are used to target consumers. The discussion will lead to the insight that lessons from the keyword advertising debate can play an important role in the transparency discourse because they broaden the spectrum of policy rationales and guidelines for new transparency rules. In addition to the current focus on consumer empowerment, the enhancement of information on alternative offers in the marketplace and the strengthening of trust in AI-driven, personalized advertising enter the picture. On balance, there are good reasons to broaden the scope of the DSA initiative and ensure access to transparency information for consumers and trademark owners alike.

Links

Artificial intelligence, Trademark law

RIS

TY  - CHAP
AU  - Senftleben, M.
PY  - 2022
DA  - 2022-02-01
T1  - Trademark Law, AI-driven Behavioral Advertising, and the Digital Services Act: Toward Source and Parameter Transparency for Consumers, Brand Owners and Competitors
SP  - 309-324
DO  - https://doi.org/10.4337/9781800881907.00023
AB  - In its Proposal for a Digital Services Act (“DSA”), the European Commission highlighted the need for new transparency obligations to arrive at accountable digital services, ensure a fair environment for economic operators and empower consumers. However, the proposed new rules seem to focus on transparency measures for consumers. According to the DSA Proposal, platforms, such as online marketplaces, must ensure that platform users receive information enabling them to understand when and on whose behalf an advertisement is displayed, and which parameters are used to direct advertising to them, including explanations of the logic underlying systems for targeted advertising. Statements addressing the interests of trademark owners and trademark policy are sought in vain. Against this background, the analysis sheds light on AI-driven behavioural advertising practices and the policy considerations underlying the proposed new transparency obligations. In the light of the debate on trademark protection in keyword advertising cases, it will show that not only consumers but also trademark owners have a legitimate interest in receiving information on the parameters that are used to target consumers. The discussion will lead to the insight that lessons from the keyword advertising debate can play an important role in the transparency discourse because they broaden the spectrum of policy rationales and guidelines for new transparency rules. In addition to the current focus on consumer empowerment, the enhancement of information on alternative offers in the marketplace and the strengthening of trust in AI-driven, personalized advertising enter the picture. On balance, there are good reasons to broaden the scope of the DSA initiative and ensure access to transparency information for consumers and trademark owners alike.
K1  - Artificial intelligence
K1  - Trademark law
ER  -

Save .RIS

Bibtex

Chapter{nokey,
	title = {Trademark Law, AI-driven Behavioral Advertising, and the Digital Services Act: Toward Source and Parameter Transparency for Consumers, Brand Owners and Competitors},
	author = {Senftleben, M.},
	url = {https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3947739},
	doi = {https://doi.org/10.4337/9781800881907.00023},
	year = {2022},
	date = {2022-02-01},
	pages = {309-324},
	abstract = {In its Proposal for a Digital Services Act (“DSA”), the European Commission highlighted the need for new transparency obligations to arrive at accountable digital services, ensure a fair environment for economic operators and empower consumers. However, the proposed new rules seem to focus on transparency measures for consumers. According to the DSA Proposal, platforms, such as online marketplaces, must ensure that platform users receive information enabling them to understand when and on whose behalf an advertisement is displayed, and which parameters are used to direct advertising to them, including explanations of the logic underlying systems for targeted advertising. Statements addressing the interests of trademark owners and trademark policy are sought in vain. Against this background, the analysis sheds light on AI-driven behavioural advertising practices and the policy considerations underlying the proposed new transparency obligations. In the light of the debate on trademark protection in keyword advertising cases, it will show that not only consumers but also trademark owners have a legitimate interest in receiving information on the parameters that are used to target consumers. The discussion will lead to the insight that lessons from the keyword advertising debate can play an important role in the transparency discourse because they broaden the spectrum of policy rationales and guidelines for new transparency rules. In addition to the current focus on consumer empowerment, the enhancement of information on alternative offers in the marketplace and the strengthening of trust in AI-driven, personalized advertising enter the picture. On balance, there are good reasons to broaden the scope of the DSA initiative and ensure access to transparency information for consumers and trademark owners alike.},
	keywords = {Artificial intelligence, Trademark law},
}

Save .bib