Branderella : Trade Marks and Fictional Characters

Different IP rights are available for the protection of fictional characters. As far as copyright is concerned, doubts may however subsist regarding the classification of characters as self-standing works which enjoy copyright protection separate from the works in which they are contained. In addition, copyright protection is limited in time and encompasses the external appearance of such characters. Trade mark protection might thus present a certain attractiveness, due to the fact that it could be virtually perpetual and relate to elements that are not necessarily connected with the external appearance of the character. This contribution discusses why trade mark protection could and/or should be pursued, and details advantages and shortcomings of such regime under EU law. As regards the latter, it is doubtful whether trade mark registration could be effectively pursued in each and every instance, particularly on consideration of the applicability of the absolute grounds for refusal or invalidity concerning distinctiveness, public policy and morality and aesthetic functionality. In addition, the scope of protection – where available – would go only as far as allowing the trade mark owner to repress third-party uses of identical or similar signs, insofar as such uses are uses in a trade mark sense and affect the functions of the registered trade mark. All this suggests that the most effective way to protect a fictional character through IP is a comprehensive strategy that relies on different rights allowing the pursuit of different objectives of exclusivity, but is also conscious of the limitations that are inherent to each and every right