[Guest post] More than just a question of interpretation? INTA attempts to prevent CJEU from interpreting ‘due cause’ too broadly in IKEA, C-298/23

The IPKat has received and is pleased to host the following guest contribution by Til Todorski (Stockholm University) concerning some recent developments relating to the pending referral to the Court of Justice of the European Union (CJEU) in IKEA, C-298/23 (discussed on The IPKat here), a key case for the interplay between freedom of expression and trade mark protection. Here’s what Til writes:

by Til Todorski

The contested use of the IKEA’s trade mark in the national proceedings leading to the CJEU referral

The International Trademark Association (INTA) submitted an amicus brief in September 2023 to the CJEU asking not to interpret the undefined legal concept of “due cause” too broadly (Article 9(2)(c) EUTMR; Article 10(6) and (2)(c) EUTMD) within the framework of the reference for a preliminary ruling in IKEA, C-298/23 (see INTA News here).

The referring court (Dutch Enterprise Court, Brussels) has asked the CJEU to clarify what role the concept of ‘due cause’ can play in balancing fundamental rights, in this case freedom of expression and the rights conferred by a trade mark, and what criteria should be taken into account (for more background information on this reference, see IPKat here).

INTA sets itself the objective of protecting the interests of the public through the proper use of trade marks and promoting the development of trade marks, related intellectual property rights and unfair competition laws and treaties worldwide, based on the global public interest in avoiding deception and confusion.

This public interest is affected in the context of the IKEA reference, as it concerns fundamental questions as to whether and under what circumstances third parties can rely on freedom of expression and parody or political statements as a defence against trade mark infringement, even though their uses (deliberately) take unfair advantage of or are detrimental to the reputation of a trade mark.

However, one problem arises from the fact that there is no procedural legal channel allowing INTA to intervene in the context of this reference for a preliminary ruling pursuant to Art. 267 TFEU. Due to the fact that INTA is pursuing a public interest in the decision and is not a party to the proceedings, they are also not entitled to be heard by the CJEU in accordance with Art. 23 of the Statute of the CJEU in conjunction with Art. 96 of the Procedural Rules of the CJEU. The same applies to a possible intervention pursuant to Art. 40 of the Statute of the CJEU in conjunction with Art. 129 et seq. of the Procedural Rules of the CJEU, allowing interested third parties’ direct filings only in appeal cases and not in preliminary ruling ones.

As a result, the CJEU is unable to consider INTA’s amicus brief in its decision for procedural reasons. Whether the CJEU judges responsible for the case will nevertheless read the brief and consider its arguments is unknown.

Although INTA is of the opinion that freedom of expression can constitute ‘due cause’ and can also be raised in this context as a defence against a trade mark infringement claim, it will always require a comprehensive assessment of the circumstances at hand.

Kat shopping at IKEA

In its amicus brief, INTA tries to emphasise the responsibility of the CJEU and asks the Court to avoid sweeping statements about when a third party acts ‘without due cause’, as these could have a significant impact on both EU and national trade mark systems and could inappropriately restrict proprietors of reputed trade marks in their rights.

Above all, INTA sees the risk that the CJEU could open the way to interpreting ‘due cause’ as something that was deliberately not included in the current EU legislative texts (EUTMR and EUTMD) by the EU legislator as part of the trade mark law reform at the beginning of 2016. What is meant here is the deliberate decision of the EU legislator not to include specific exceptions, such as those already known from other areas of IP law, in particular parody, artistic expression, criticism and comment, into the provisions of the EUTMR or EUTMD. The concept of ‘due cause’ should not be used as a back door and be interpreted as something that the legislator deliberately omitted to regulate.

INTA’s amicus brief makes it clear once again that the IKEA referral is one to watch closely.

It is no longer “just” about the fundamental balancing act between freedom of expression on the one hand and trade mark rights on the other, but also about a fundamental decision on what role ‘due cause’ can fulfil in the trade mark law system of the EU.

Depending on what the CJEU has to say about ‘due cause’, it may even be worth considering whether ‘due cause’ could become akin to an opening clause in the trade mark system, which could serve to construe relevant defences (similar to, e.g., ‘fair dealing’ under UK copyright law) and potentially even exceed them (like some sort of ‘fair use’). However, it should be borne in mind that even EU copyright law does not provide for such a flexible approach to limitations and exceptions, but instead has established a closed catalogue of limitations and exceptions within the framework of Art. 5 InfoSoc Directive. The CJEU was adamant that that would be the case in decisions like Funke Medien, C-469/17 and Spiegel Online, C-516/17. Therefore, it would need some imagination to assume that such an open regulation of limitations would find its way into EU trade mark law.

In sum: All eyes on the CJEU.