Freedom of expression is only "due cause" if targeted at the trade mark holder, says Advocate General in IKEA-PLAN opinion

"Free political debate is an essential element of any democratic society," said Advocate General Szpunar in the opening of his Opinion in Inter IKEA Systems v Algemeen Vlaams Belang (Case C‑298/23), delivered today. Since EU trade mark law contains no specific provisions on freedom of expression, the Opinion confirmed that "due cause" has a key role to play in balancing freedom of expression and the rights of a proprietor of a trade mark with a reputation.

However, the "due cause" requirement does not compel the proprietor of a trade mark with a reputation to tolerate (in the absence of another valid justification) the use of their trade mark, where the contribution of that use to a debate of public interest doesn't outweigh the fact that the use is an attempt to ride on the coat-tails of a trade mark with a reputation in order to disseminate and promote a political programme. That seemed to apply in the case at hand, where the Vlaams Belang political programme about immigration didn't actually target the IKEA trade marks, company, or its goods or services.

Background

The case was referred by the Brussels Enterprise Court (see IPKat here). The dispute was brought by the very well-known Swedish do-it-yourself furniture supplier, IKEA. They brought a trade mark infringement action against the political party Vlaams Belang in 2022, after the party launched its programme for reforming asylum and immigration policy in Belgium that it called the "IKEA-PLAN" (where "IKEA" stands for "Immigratie Kan Echt Anders" - Immigration really can be different). The plan consisted of 15 political proposals that were presented in the form of an IKEA assembly instruction manual, and IKEA's trade marks appeared in the accompanying illustrations.

In applying the protections for trade marks with a reputation, the referring court asked whether freedom of expression, including the freedom to express political opinions and political parody, as guaranteed by Article 10 ECHR and Article 11 of the Charter of Fundamental Rights, constitute "due cause" for using a sign identical or similar to a well-known trade mark within the meaning of the EU Trade Mark Regulation and Directive? And if so, what are the criteria to be taken into account and the importance to be attached to each?

The Opinion

Use in the course of trade and in relation to goods or services

The Opinion was published this morning. AG Szpunar began by discussing the issue of "use in the course of trade" and "use in relation to goods or services" as precursors for a finding of infringement. He acknowledged the academic commentary from Bochaczewski, Todorski, and Jacques, that highlights how these requirements can help to avoid conflicts between the right to property (i.e., trade mark rights) and freedom of expression.

The Opinion determined that a mark might still be used "in the course of trade" even if used by a non-profit entity, as shown by analogy to the case law on "genuine use" of a mark. In particular, AG Szpunar noted that "the Belgian Parliament makes grants to political parties based on their election results" which creates "an indirect but identifiable link between the effort devoted to political campaigns and the funds made available to a given political party or the entities that support it." It could still constitute use "in the course of trade" if the trade mark is used by a third party on behalf of the political party.

As for the use of the sign for political purposes, AG Szpunar took the view that "the signs in question were used not to initiate a debate about IKEA or its products, but in the interests of a political party, in order to promote its political message and distinguish it from that of other Belgian parties." A political programme is not itself a product or service. However, organising an event under that sign, or affixing the sign to objects for distribution to supporters, as well as advertising, could constitute use "in relation to goods or services."

Due Cause

AG Szpunar noted that that concept of "due cause" is not defined, but should be used to strike a balance between the interests of the trade mark proprietor in safeguarding the essential function of that mark and the interests of a third party, which may include both objectively overriding reasons but may also relate to the subjective interests of a third party in using the sign. Since freedom of expression is guaranteed to "everyone":

Irrespective of whether the sign is used in the context of a political campaign as a trade mark, I see no reason to consider that conduct intended to disseminate and promote a political message cannot benefit from the protection guaranteed by those provisions.

In other cases, the CJEU has already rejected the idea that freedom of expression is not a concern for trade marks, by holding that it should be taken into account in the grounds for refusal of registration. Regarding infringement, "due cause" is the key mechanism for balancing trade mark rights with freedom of expression. However, AG Szpunar observed that: "the exercise of freedom of expression does not in itself constitute 'due cause'. On the other hand, the same reasons that lead to giving precedence to the protection of that freedom when balancing it against the rights of others may validly be regarded as constituting such cause."

The criteria for due cause

Turning to the second part of the referred questions, AG Szpunar reviewed the case law on "due cause" and noted two key points:

The use of a sign with the intention of riding in the wake of a trade mark with a reputation cannot, without other valid justification, constitute due cause.
Such a "valid justification" may be based on objectively overriding considerations or the subjective interests of a third party. It isn't a requirement of absolute necessity. It should be weighed against the interest of the proprietor and taking into account the standards of conduct generally accepted in the sector in which the third party operates.

AG Szpunar referred to ECtHR case law about balancing the right to property with freedom of expression, highlighting that a key factor is whether "the expression at issue contributes to a debate of general interest," and in the field of political speech and debate, the form of the expression and whether it is satirical in nature. Normally, there is little scope for restrictions on political speech, but "a wider margin of appreciation is generally available to the Contracting States when regulating freedom of expression in commercial matters."

While Vlaams Belang's political programme concerns subjects of legitimate interest to the public, the contested use of the marks not relevant to the political programme, "but to the use of a sign corresponding to the reputed trade marks in order to increase the visibility of that programme and of the political party proposing it." This meant that the use of the marks was not justified by its contribution to a debate of general interest. It was also relevant that IKEA had never engaged in this debate. AG Szpunar concluded that:

any contribution to the debate in the public interest made by the expression based on the use of signs corresponding to reputed trade marks in order to disseminate a political programme which does not concern those trade marks, their proprietor or its goods and services cannot, in view of the interest of that proprietor, outweigh the fact that such use must be understood as an attempt to ride in the wake of a reputed trade mark in order to promote one’s own interests.

Final Thoughts

It was fairly unsurprising that the Advocate General recognised that freedom of expression can be relevant to the analysis of due cause. But the rest of the analysis may be contentious. While the Opinion will probably be welcomed by the International Trademark Association (INTA) (see discussion of their amicus brief by Katfriend Til Todorski here), scholars may be more critical of the focus on whether the political expression targets the company or its trade marks. For example, Izyumenko recently highlighted that some national judgments have recognised that corporate symbols may represent wider social or cultural phenomena beyond the companies themselves, which can be relevant to this balancing assessment.

We will eagerly await the final judgment from the CJEU, which is expected to be a landmark decision. In the mean time, this Opinion will be Katnip for readers who are interested in the interactions between human rights and intellectual property law!

Source: https://ipkitten.blogspot.com/2025/11/freedom-of-expression-is-only-due-cause.html