1. 8th WIPO Advanced Research Forum on Intellectual Property Rights, WIPO- Geneva, May 26-28, 2014 The need for a fair referential trademark use from the perspective of users and civil society Tomas Westenbroek MA LLM Vrije Universiteit Amsterdam

3. What is the problem? Permission? As a parodist? As a competitor on the same or adjacent market? Comparison Spare parts

4. The problem is…. Freedom of expression Freedom of competition

5. To Use or To Abuse? (Nominative) Fair Use (US) Limitations (EU)

6. EU Case Law Categories of Use: Decorative Use Referential Use Use as a Tradename Use in Comparative (Keyword) Advertising

7. Where? Double identity protection DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008 2013/0089 (COD) COUNSIL EU, 12 May 2014 Article 5 Rights conferred by a trade mark 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

8. Expanding view of TM use The following, in particular, may be prohibited: (a)affixing the sign to the goods or to the packaging thereof; (b)offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c)importing or exporting the goods under the sign; (e)using the sign on business papers and in advertising;

9. EASY USE? (d)using the sign as a trade or company name, [...] or as a domain name, or as a part thereof; (f)using the sign in comparative advertising in a way which is contrary to Directive 2006/114/EC. (!) Non exhaustive list (C-236/08 to C-238/08 Google/Vuitton, par 65) Use in the course of trade: “commercial activity” (C-236/08 to C-238/08 Google/Vuitton, par 50) ~ low threshold

10. The right place for referential trademark use in EU? Art 5(1)(a) TMDir = ‘hardcore IP’ namely double identity- protection against counterfeit Never intended to be applicable in cases of referential use of trade marks. But: applied to decorative use (Opel/Autec), referential use (BMW/Deenik), use as a tradename (Céline) and in comparative (keyword) advertising (Google/Vuitton and M&S) Interflora (!) What about: Fair use? Descriptive use?

11. Another position, another point of view ™Use? (ECJ) Other Use? (National Law)

12. EU Limitation Article 14 (NEW) Limitation of the effects of a trade mark 1.The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a)where the third party is a natural person, his own […] [OPTION 1: first name and surname] [OPTION 2: surname] or address; (b)signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;

13. EU Limitation (c) the trade mark where that is necessary for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark, in particular […]to indicate the intended purpose of a product or service, in particular as accessories or spare parts. 2.Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters. The use by the third party shall be considered not to be in accordance with honest practices in particular in the following cases:

14. Even more limited…. (a)it gives the impression that there is a commercial connection between the third party and the proprietor of the trade mark; (b)it takes unfair advantage of or is detrimental to, the distinctive character or the repute of the trade mark without due cause.

15. Another way out? 5(5) TMDir: “Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. Benelux Convention on Intellectual Property (BCIP)

16. Another way out? Article 2.20 BCIP Scope of protection 1. A registered trademark shall provide its holder with an exclusive right (…) shall permit its holder to prohibit any third party, without its consent, from: (…) d. using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark.

17. What’s the point? Within or outside the scope of the European harmonized trademark system? Territoriality argument Markets or market European trademarks vs National trademarks

18. What’s the point? Legal security argument Is there such a thing as European humour? Other use (!) Or do we want a European fair use catalogue? What about a mandatory 5(5) ‘Benelux’ provision? Fair use ~ Due cause

19. FAIR USE: burden of proof?! Prohibition of: d. using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark. Or: Allowance of: d. using a sign for referential purposes unless no fair use is being made of the sign and the holder has a legitimate reason to oppose the use of that sign.

20. The right place for referential trademark use! No more defragmented case-law from ECJ A hold to the ‘stretching’ of the concepts of ‘use’ and ‘trademark use’ Art 5(1)(a) TMDir to be applied as intended (anti- counterfeiting) Art 5(5) The ‘right place’ for the development of a European fair referential use catalogue? More case-by-case ‘fair use’ law without a huge impact on the trademark system as a whole

21. Another position, another point of view END ……or the beginning?