European Parliament, 5 November 2013 Trademarks, Free Speech, Undistorted Competition Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

EU Trademark Law Trade Mark Directive 89/104/EEC (1988) = 2008/95/EC (2008) TMD Community Trade Mark Regulation 40/94 (1993) = 207/2009 (2009) CTMR

Rationale of protection

proprietorcompetitor consumer ensuring honest commercial practices consumer protection and information contribution to a functioning market Market transparency

EU Charter of Fundamental Rights Art. 17(2): right to property ‘Intellectual property shall be protected.’ Art. 11(1): freedom of expression and information ‘…shall include freedom to hold opinions and to receive and impart information and ideas…’ Art. 16: freedom to conduct a business ‘…in accordance with Union law and national laws and practices is recognised.’

‘Nevertheless, whatever the protection afforded to innovation and investment, it is never absolute. It must always be balanced against other interests, in the same way as trade mark protection itself is balanced against them. I believe that the present cases call for such a balance as regards freedom of expression and freedom of commerce.’ (para. 102) CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro

Not only protection…

Art. 5(1) TMD (mandatory) consumer protection only a few specific exceptions Art. 5(2) TMD (optional) protection of investment flexible ‘due cause’ defense exclusive link with a sign creation of a brand image advertising quality control Expansion of harmonized protection

CJEU, L’Oréal/Bellure

‘...where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark...’ (para. 49) no damage required, free-riding sufficient CJEU, L’Oréal/Bellure: relaxation of infringement criteria

‘These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising.’ (para. 58) recognition of further protected functions, in particular goodwill functions CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure

…but also freedoms

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

rationale underlying the limitation ‘…in order to provide the public with comprehensible and complete information as to the intended purpose of the product which it markets, that is to say as to its compatibility with the product which bears those trade marks.’ (para. 34)

O2: –registered bubbles as a trademark Hutchison: –shows in advertising for telecom services black- and-white pictures of moving bubbles –compares prices of telecom services –not perceived as a source identifier by the public CJEU, June 12, 2008, case C-533/06, O2/Hutchison

ECJ, 4 November 1997, case C-337/95, Dior/Evora

Marks & Spencer –selects the trademark ‘Interflora’ and variants as search terms –sponsored search result: ‘M & S Flowers Online Gorgeous fresh flowers & plants Order by 5 pm for next day delivery’ CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

Sustainable system needed

…same colours and letter type, but written as ‘E$$O’ Due cause defence

Art. 5(1) TMD (mandatory) consumer protection only a few specific exceptions Art. 5(2) TMD (optional) protection of investment flexible ‘due cause’ defense exclusive link with a sign creation of a brand image advertising quality control General application

not only with regard to marks with a reputation (Art. 10(2)(c) TMD; Art. 9(2)(c) CTMR) but with regard to all types of trademark claims (Art. 14(1) TMD; Art. 12(1) CTMR) General application

The end. Thank you! contact:

Due cause defence flexible rights require flexible limitations tailor-made balancing keeping pace with technical development: fast reaction to new forms of speech and new business models MPI Overall Functioning Study, § ‘…allow for flexibility not previously envisaged by legislation…’

Due cause defence implementation strategy? MPI Overall Functioning Study, § ‘…A possible legislative technique would be the combination of a general exception with specific examples…’