Night Watch, Why Not? The art of trade mark application

The Benelux Office for Intellectual Property (BOIP) came up with an imaginative marketing campaign to get people filing trade marks: the promise was that everyone who filed a Benelux trade mark application between 13 September and 14 November would receive a gift in the form of a painting of their new trade mark. This PR campaign, entitled “Your trade mark on canvas”, was however far too tempting for one of this Kat’s friends to resist. Let Bas Kist (now a partner in Dutch trade mark and branding practice Chiever) take up the tale:

Exactly a week ago, on 9 November 2015, Chiever filed an application to register Rembrandt’s painting The Night Watch as a trade mark with the Benelux Office for Intellectual Property (BOIP). 

The Night Watch (detail)

The reason for this was not claim any rights for the Night Watch but just to get hold of a nice reproduction of this iconic work to stick on the office wall. The application was filed in respect of “strontium” in Class 1 of the Nice Classification.  

There was an ulterior motive for this application too. It would ideally provide an answer to the question whether European trade mark law allows the registration of famous old painting as trade marks (if you look in the Benelux register, you will spot that Nestlé has already got there with its Vermeer milkmaid, left, and Manpower has its Leonardo da Vinci drawing, below right. Both were registered a long time ago, at a time when BOIP was not yet allowed to check applications on absolute grounds).

So the question was whether BOIP would accept the registration of The Night Watch, or is a painting of this kind just too complex to be a trade mark? We don’t think so, since it’s eminently recognisable. But might it be refused because such a trade mark is thought to be contrary to public order or the principles of morality? We would be surprised if that were so.

And what about distinctiveness? Is a painting that’s so famous really distinctive enough to function as a trade mark? Perhaps not, if it’s used for a biscuit tin or a box of chocolates -- which is why we selected a product for which even The Night Watch must surely be sufficiently distinctive: the chemical element strontium. We’ve not yet fully decided where to display The Night Watch when it’s delivered to our office. Meanwhile, BOIP has proven to be a good sport. Shortly after the filing of the application, BOIP posted a tweet saying:

‘Will the Night Watch application come to registration? We are already preparing the canvas’.

The tweet was accompanied by a photo-shopped Night Watch, in which you can recognize not only our firm’s management team but also the Board of Directors of BOIP. 

This Kat recalls that this is not his friend's first foray into slightly mischievous trade mark matters.  Readers may remember Case C-283/01 Shield Mark NV v Joos Kist, trading as Memex, in which it was not Rembrandt who provided the cultural content but Ludwig van Beethoven.

Merpel has some bad news for Bas and his colleagues, though: she has spotted some killer prior art, below: