What's in a Name? International Olympic Committee to Lose "Pierre de Coubertin" Trade Mark

Were it not for the pandemic, many Kat readers would currently be following the Summer Olympics in Tokyo. As admittedly small comfort, the IPKat can at least report about some Olympic IP news, while waiting for the Games of the XXXII Olympiad of the modern era.

Baron Pierre de Coubertin

Baron Pierre de Coubertin is widely known as the father of the modern Olympic Games and the founder of the International Olympic Committee (IOC), an organization he presided over almost 30 years.

The IOC filed for trade mark protection of its founder's name in classes 9, 14, 16, 25, 35, 36, 38, 41 and 42 only less than 20 years ago in Switzerland, the country where the IOC has its seat. The word marks "DE COUBERTIN" and "PIERRE DE COUBERTIN" were granted without opposition in 2002. What happened after was the subject of two recent decisions (here and here) of the Swiss Trademark Office (Federal Institute of Intelectual Property, FIIP), currently under appeal with the Federal Administrative Court.

In 2017, Tempting Brands Netherlands BV filed a cancellation request with the FIIP, arguing that neither of the two "DE COUBERTIN" marks has ever been put to genuine use (see the Katpost here on the Australian episode of the saga between Tempting and the IOC). Under Swiss law, if a trade mark is not put to genuine use for five years without having valid reasons for the non-use, anyone can file a cancellation request with the FIIP.

The IOC argued that it had indeed put its founder's name to use as a distinctive sign. "Pierre de Coubertin" has been used, inter alia, on a series of products sold in the shop of the Olympic Museum in Lausanne, in an online game and to designate a medal awarded "to those athletes, former athletes, sports promoters, sporting officials and others who exemplify the spirit of sportsmanship in Olympic events or through exceptional service to the Olympic movement".

The FIIP countered that none of this pointed to "Pierre de Coubertin" being used as a distinctive sign. The use of the name in books, DVDs and the like does not qualify as use as a distinctive sign, because "Pierre de Coubertin" is used as a reference to the content of the products rather than serving as a badge of origin. The same, they claim, is true regarding postcards, key rings, T-shirts and stamps sold at the Olympic Museum in Lausanne, where the IOC's founder's name is used as a reference to the person pictured on the product, not to the origin of the goods. With regard to the online game, the IOC has failed to provide evidence of any users in Switzerland.

Regarding the "Pierre de Coubertin medal", the FIIP argued that "Pierre de Coubertin" is neither written on the medal itself nor on its packaging. In any event, the use in connection with the award of the Pierre de Coubertin medal would at best constitute use in connection with the service of "awarding prizes" and not with respect to "medals".

The IOC also argued that it is operating a network of schools under the name-- "Pierre de Coubertin" and, as well, it organizes a "Youth Forum Pierre de Coubertin" once every two years. However, no such school is located in Switzerland, nor has any such Youth Forum taken place in Switzerland during the five-year grace period since registration. Hence, no genuine use has taken place on Swiss territory.

As a result, both trade marks-- "Pierre de Coubertin" and "de Coubertin", were cancelled for lack of genuine use.

Not in an Olympic mood yet

Trade marks may not be the best way to protect the heritage of the dead

The foremost learning of this case (at least until the appeal decision is handed down) is that trade marks may not be the best option to protect the goodwill or cultural heritage related to a deceased person. Trade marks are subject to use requirements in most jurisdictions. If the name is not used as a distinctive sign of products or services, but merely as a reference to the deceased person or his/her heritage, the protection may turn out to be non-existent, as in this case. Other options, such as the protection as the name of a foundation or under unfair competition laws, may be more promising.

But dead celebrities' names are valuable…

The basic question of whether the name of a long deceased celebrity can be exclusively owned as a trade mark with respect to specified goods or services, and, if so, by whom, is hardly new.

• In Germany, the scope of protection of the trade mark "Johann Sebastian Bach", registered for "chinaware" and other products, was considered as very narrow and could not be used to prevent artistic or cultural discussion of or references to the composer's heritage, such as, for example, the sale of Bach-themed chinaware. In spite of the double identity of products and signs, the public did not have an expectation of a specific origin for "BACH"-branded products, the risk of confusion was therefore denied (see OLG Dresden, published in NJW 2001, 615).

• Similarly, in Switzerland, "Rainer Maria Rilke", registered for wine, was deemed a valid trademark, but with a narrow scope of protection. While it won its owner an injunction against "Rilke-Wine" produced by a third party, the court did not issue an injunction against the use of the German poet's name in the context of a wine "dedicated to Rilke" (see Cantonal Court of Valais, published in sic! 2016, 343).

• "Karl May", one of the most read German authors, was deemed to be descriptive and inherently unregistrable for products and services that the public may expect to be linked to his works, such as "films, recording apparatuses, audio and video media, production of movies, edition of books" (see Federal Patent Court, 32 W (pat) 28/05).

• "Mozart" has been the topic of several Austrian (where else?) court decisions. A Vienna court considered in 2006 that "Mozart" has become a "buzzword" and a marketing instrument that would not be understood by the relevant public as a reference to any individual entity (see OLG Vienna, 1R 2/06f).

… or are they?

These cases beg the more interesting question of how valuable a trade mark with the name of a dead person ultimately is. Any famous name will always remain immune from injunction, as long as it is used descriptively or in reference to the famous person. If the name is too well-known (Bach or Mozart may be examples on point), enforcement may fail even against the use of the name as a trademark, because of the absence of a risk of confusion. Less well-known names (think Nikola Tesla) may, on the other hand, be more easily “re-monopolized” for certain products and services. Where Pierre de Coubertin is located on this sliding scale may be told by future court decisions.

Picture on the left in the public domain.

Picture on the right (c) by Dr Judit Banhidi