Trademark Law IP Law and Management, CEIPI

Trademark Law IP Law and Management, CEIPI
Strasbourg, January 24, 2015 Trademark Law RA Prof. Dr. Martin Senftleben Bird & Bird, The Hague VU University Amsterdam

Overview of the IP system
culture copyright law commerce technology trademark law patent law

Legislation

International (substantive law)
WIPO: Paris Convention for the Protection of Industrial Property (PC, 1883/1967) WTO: Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, 1994)

International (procedural law)
WIPO: Madrid System Madrid Agreement Concerning the International Registration of Marks (1891/1967) Protocol Relating to the Madrid Agreement (1989) WIPO: TLT System Trademark Law Treaty (1994) Singapore Treaty on the Law of Trademarks (2006) WIPO: Nice Agreement (1957/1979)

European Union Trademark Directive 89/104/EEC (1988) = Directive 2008/95/EC (2008) Community Trade Mark Regulation (CTMR) /94 (1993) = 207/2009 (2009)

Definition and function

Distinctive signs ‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’ (art. 15(1) TRIPS Agreement)

Function (macro): market transparency
ensuring honest commercial practices consumer protection contribution to a functioning market producer competitor consumer

Function (micro): business strategy
origin function identification of enterprises as the commercial source of goods or services quality function expectations of consumers encouragement to maintain the attained quality standard communication function additional information: lifestyle, attitudes trademark image Agreement and Protocol are independent, parallel treaties. A state may be party to either or both. An IGO may be party to the Protocol.

Function (micro): business strategy
marketing quality control exclusive link with a sign creation of a brand image product identification passive TM defense limited to specific sectors consumer communication active TM exploitation TM becomes a product

Strategic approach

Intelligent legal services
type of trademark appropriate marketing tool for your target markets? appropriate basis for strong legal protection? availability of the trademark prior rights structure differs from country to country trademark clearance avoids conflicts description of goods and services different approaches, for instance, in EU and US requirement of use

Intelligent legal services
portfolio management registration and administration costs languages, dates, trademark monitoring establishment of a trademark holding? tax efficiency brand exploitation investment in marketing enhanced protection of resulting reputation trademark rights become exploitation rights selling and licensing of a favorable brand image

less costly trademark portfolio
Cost effectiveness less costly trademark portfolio generating extra income = business asset

Successful brand management
from the costly defense of trademark rights to the creation of exploitable brand value

Step 1: marketing decisions

Checklist Which signs are desirable from a marketing perspective?
Which scope of protection is desirable from a legal perspective? How to strike a proper balance between these (potentially competing) goals?

Kinds of marks

Art. 2 Trademark Directive (TMD)
‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

words, letters, numerals drawings, colors, pictures 3D hologram motion
Overview of signs Visible signs Non-visible signs words, letters, numerals drawings, colors, pictures 3D hologram motion position sound (audio) smell (olfactory) capable of being represented graphically?

Words, letters, numerals
“American Express”, “Boss”, “Holiday Inn”, “Microsoft”, “Pizza Hut”, “Puma” “Mars”, “McDonald’s”, “Mercedes Benz”, “Ralph Lauren”, “Jil Sander” “Adidas”, “Kit Kat”, “Kodak”, “Reebok” “BMW”, “CNN”, “IBM”, “M&M”, “YSL” “A6”, “501”, “No. 5”, “S 500”, “4711”

Drawings, pictures, colors

3D Shapes

Audio marks, smell marks
the roar of a lion? the tune of a mobile phone? an engine noise? the smell of fresh-cut green grass?

Excluded signs

CJEU, January 25, 2007, case C-321/03, Dyson/Registrar of Trade Marks
‘[t]he mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.’ (para. 10)

CJEU, January 25, 2007, case C-321/03, Dyson/Registrar of Trade Marks
‘…the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage […], since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.’ (para. 38) subject matter = mere product property no ‘sign’ in the sense of the Directive

‘the distinctive design and layout of a retail store’ (para. 9)
But see also: CJEU, 10 July 2014, case C-421/13, Apple Flagship Store ‘the distinctive design and layout of a retail store’ (para. 9)

Excluded signs (art. 3(1)(e) TMD)
‘The following shall not be registered or if registered shall be liable to be declared invalid: […] signs which consist exclusively of: the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.’

CJEU, June 18 2002, case C-299/99, Philips/Remington

‘… to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors.’ (para. 78) no monopolisation of decisive product features safeguarding freedom of competition

‘In refusing registration of such signs, Article 3(1)(e), second indent, of the Directive reflects the legitimate aim of not allowing individuals to use registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions.’ (para. 82) no artifical extension of the term of patent protection

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)
Philips/Remington confirmed in particular: shape alternatives not decisive

Rationale? culture copyright law commerce trademark law technology patent law

General Court, 6 October 2011, case T-508/08, Bang & Olufson

need to prevent monopoly also in the case of substantial value shapes ‘Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes.’ (para. 66)

this need arises in particular in the case of specific design ‘Indeed, the shape for which registration was sought reveals a very specific design and the applicant itself admits [...] that that design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value.’ (para. 74)

this need arises in particular in the case of specific design ‘Furthermore, it is apparent [...] that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.’ (para. 75)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

rationales underlying shape exclusions
CJEU, 18 September 2014, case C-205/13, Hauck/Stokke rationales underlying shape exclusions competition: no monopoly on essential product characteristics term extension: no evergreening of rights with limited period of protection

need to safeguard competition in case of shape resulting from nature of the goods not only when indispensable (natural and regulated products) but also when inherent to the generic function ‘…that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration.’ (para. 25)

no artificial extension of limited protection in the case of substantial value shapes catalogue of essential characteristics nature of the category of goods concerned artistic value of the shape in question dissimilarity from other shapes on the market substantial price difference promotion strategy accentuating aesthetic characteristics (para. 35)

Similar outcome? culture copyright law commerce trademark law technology patent law

Protection requirements

Art. 2 TMD ‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

graphical representation distinctive character
Core requirements procedural: graphical representation (register transparancy) substantial: distinctive character (market transparancy)

Graphical representation

CJEU, 27 December 2002, case C-273/00, Sieckmann
at issue: registration of a smell mark (cinnamic acid methyl ester) ‘...that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.’

CJEU, 27 December 2002, case C-273/00, Sieckmann
in case of an olfactory sign (-) ‘In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.’

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist
notation: ‘On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.’

Distinctiveness

Distinctiveness trademark = means of distinction
distinctiveness = basic requirement to be determined with regard to specific goods or services (principle of speciality) ‘Ajax’ for a soccer team ‘Ajax’ for a cleaning detergent depends on social and cultural context case-by-case analysis

indication of product features
Distinctive signs? indication of product features ‘makes clean’ for a cleaning detergent use of generic terms ‘apple’ for apples ‘camel’ for camels ... (-) fanciful signs ‘persil’ for a cleaning detergent signs adopted arbitrarily with regard to the goods or services ‘apple’ for computers ‘camel’ for cigarettes ... (+)

No constant level of distinctiveness
may exist from the very beginning (arbitrarily-chosen, strong trademark) can be acquired or become stronger through use (secondary meaning) but may also decrease (dilution) may even be lost (trademark becoming a generic term)

(-) (+) (-) Overview of influence factors genericism secondary meaning
dilution

Need to keep free

Descriptive signs (art. 3(1)(c) TMD)
Marks consisting exclusively of signs indicating the... other characteristics of goods/services kind, quality, quantity value, intended purpose geographical origin

Public interest CJEU, 12 February 2004, case C-265/00, Biomild
‘... that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods.’

CJEU, 12 February 2004, case C-265/00, Biomild
A combination of descriptive elements is itself descriptive, unless ‘...there is a perceptible difference between the neologism and the mere sum of its parts.’ decisive: different impression

Step 2: management decisions

Checklist For which goods and services should the trademark be protected? In which markets should the trademark enjoy protection? How to obtain and uphold the required protection for relevant goods and services in these markets?

Registration

Basic principles registration must always be made in respect of specific goods and services (principle of speciality) ‘Ajax’ for a soccer team ‘Ajax’ for a cleaning detergent first application prevails over subsequent applications exception: application in bad faith first application may be an application in another Member State of the Paris Union (Union priority)

Paris Union

Right of priority (art. 4 Paris Convention)
filing in other Union countries filing in one country of the Paris Union 6 months

Term of protection 10 years, as of application (filing date) indefinitely renewable for further terms of 10 years patents, industrial designs trademarks

Community Trade Mark

CTM Registration publication refusal application examination opposition registration conditions of filing absolute grounds relative grounds

Absolute grounds for refusal (art. 7(1)(e) CTMR)
‘...signs which consist exclusively of: the shape which results from the nature of the goods themselves; or the shape of goods which is necessary to obtain a technical result; or the shape which gives substantial value to the goods.’

Absolute grounds for refusal (art. 7 CTMR)
trademarks which are devoid of any distinctive character trademarks which consist exclusively of signs or indications which have become costumary in the current language or in the bona fide and established practices of trade (= generic)

trademarks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or service (= descriptive) trademarks contrary to public policy or to accepted principles of morality trademarks which are of such a nature as to deceive the public

Examples deceptive signs “Orwooola” for goods made 100% of synthetic material signs contrary to morality or public order “Jesus” for jeans “Cannabia” for foodstuff

trademarks which have not been authorized by the competent authorities (art. 6ter Paris Convention) trademarks which include badges, emblems or escutcheons of particular public interest

Registration acquisition of trademark rights
term of protection: 10 years indefinitely renewable Still possible: application to the Office/ counterclaim in infringement proceedings: revocation (effect ex nunc, Art. 51 CTMR); invalidation (effect ex tunc, Arts. 52, 53 CTMR)

Requirement of genuine use (art. 51(1)(a) CTMR)
Revocation possible ‘if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use...’

CJEU, 11 March 2003, case C-40/01, Ajax/Ansul
holder of ‘Minimax’ for fire extinguishers sales authorisation expired in 1988 still uses the trademark for component parts, extinguishing substances and repair services Ajax: registered ‘Minimax’ for fire protection materials and related items in 1992 starts using the mark in 1994 invokes genuine use defense against Ansul

‘…in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.’ ‘…whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark…’

‘…for goods that were sold in the past does not mean that its use is not genuine, if the proprietor makes actual use of the same mark for component parts that are integral to the make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods.’

Registration strategies

The problem national route solution 1:
file in many Offices in many languages fees in many currencies numerous national agents results in many national registrations requires many renewals changes to be recorded via each national Office solution 1: harmonisation of national procedures solution 2: bundle of registrations via central procedure solution 3: transnational trademark law system

Routes to registration
OHIM: Community Trade Mark covers entire EU territory national Madrid System: international registration

Streamlining via the EU system?
Switzerland ‘uncontrolled’ accumulation of registrations

EU route: Community trademark (CTM)
filing in an official EU language indication of a second language for opposition, revocation or invalidity procedures (art. 119 CTMR: EN, FR, DE, IT, ES) seniority claims (art. 34 CTMR) conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR)

B registers the conflicting mark YY.
Claiming seniority A registers the mark Y. B registers the conflicting mark YY. A registers Y as a CTM. Does he still have to keep the earlier registration of Y in Germany?

Conversion filing date of CTM application maintained (including potential priority date) seniority guaranteed designated EU Member States can ask: payment of national fees translation into an official language of the State concerned address in the State concerned reproduction of the trademark

Streamlining via international route?
Switzerland ‘uncontrolled’ accumulation of registrations

International route: Madrid System
basic principle: extension of protection in one Member of the Madrid Union to other Members one international registration leading to a bundle of trademark rights in designated Members central recording of changes (name, address, new holder) central renewal (online) subsequent designations (new markets) language regime: EN, FR, ES

Madrid Union Following the accessions by these seven countries and by the EC, the Madrid Union will have, on October 1, 77 members: 66 Contracting Parties to the Protocol and 56 to the Agreement. In this map are indicated, in light blue the 11 countries still bound only by the Agreement; in dark blue, the 45 countries which are bound by both treaties, and in green-blue the 20 countries which are bound only by the Protocol, to which should be added the European Community. As we can see, the Madrid system continues to expand in different regions in the world. Europe is still the region the most largely represented (with 42 Members). But the System has now also 19 members in Asia, 12 in Africa and 3 in the Americas. Altogether, the Madrid Union countries account today for more than half of the world population (3.1 billion people) (out of 6.1 billion). Their combined Gross Domestic Product represents about 2/3 of the world gross product. This means that the Madrid System is certainly offering a very attractive market for making business to all those who are entitled to use it.

Overview of the System Madrid Agreement (A) Madrid Protocol (P)
Madrid Agreement of April 14, 1891 Madrid Protocol (P) Madrid Protocol of June 27, 1989 common regulations administrative instructions national law (Madrid interface)

International Application
Resulting procedure national basis: registration (A/P), application (P) Certifies particulars in international application = particulars in basic application or basic registration OFFICE OF ORIGIN International Application Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties INTERNATIONAL BUREAU substantial examination OFFICE OF DESIGNATED CONTRACTING PARTY within 12/18/18+ months no refusal = effect of a national registration refusal

P AP P AP P P AP AP Switzerland as a basis
United States P AP AP P European Community Switzerland AP AP As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE]. SAFEGUARD CLAUSE China

AP P AP AP P P P P EU as a basis
Egypt P P P AP Switzerland European Union P AP As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE]. SAFEGUARD CLAUSE China

further steps: subsequent designations (further markets)
Stages of extension further steps: subsequent designations (further markets) first step: designation of Madrid Members in the initial application

Advantages one international registration
effect of a bundle of national registrations efficient management changes (name, address, ownership) renewal flexibility subsequent designations limitation, renunciation, cancellation = cost savings

Step 3: monitoring and exploitation

Checklist How to monitor the trademark register and the market in relevant countries? How to decide on whether or not to take action against competing signs? What is the scope of trademark rights?

Trademark rights

Exclusive right: art. 5(1) TMD
‘...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: [...]’

Exclusive right: art. 5(3) TMD
Use in the course of trade: offering goods or services under the mark affixing the mark to the goods or their packaging putting goods on the market stocking goods for that purpose importing or exporting goods under the mark use on business papers or in advertising

Layers of trademark protection
a. identity b. similarity c. similarity+ …between the mark and the sign? …between the goods and services?

Identity: absolute protection

identical goods or services
Identity identical signs identical goods or services adverse effect on one of the functions of the trademark “Lacoste” for shirts “Swatch” for watches “Toyota” for cars

Protected trademark functions
CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure: ‘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)

Confusion: similarity

identical or similar signs identical or similar goods or services
Similarity identical or similar signs identical or similar goods or services required: likelihood of confusion as to the origin of goods or services “Lowcost” for shirts “Swotch” for watches “Toy-yoh-tah” for cars “Lacoste” for trousers “Swatch” for thermometers “Toyota” for bicycles

Similarity between sign and trademark
comparison of: trademark as registered and sign as used in trade no direct comparison, focus on what consumers can remember The overall impression is decisive, not the details of the sign and the trademark.

Similarity between sign and trademark
aural Claeryn/Klarein visual Bally/Baileys conceptual Mars/Venus differences can compensate similar features: Obelix/Mobilix

Similarity between goods or services
= when the public perceives the goods or services as related to each other CJEU: The assessment must take account of all relevant factors defining the relation between the goods and services. kind, purpose, use competing or complementary character (case C-39/97, Canon/Cannon)

Influence of the degree of distinctiveness
distinctive character as a basis for identification the more distinctive the earlier mark, the greater the likelihood of confusion (CJEU, case C-251/95, Puma/Sabel, para. 24) the more distinctive the earlier mark, the broader the field of similar goods/services (CJEU, case C-39/97, Canon/Cannon, para. 19)

CJEU, 11 November 1997, case C-251/95 Sabel: application in Germany Puma: opposition

CJEU, 11 November 1997, case C-251/95, Puma/Sabel
Risk of association in the strict sense (without risk of confusion) is insufficient. Risk of confusion in any case required. Two types: direct confusion: the public confuses the products concerned indirect confusion: the public thinks that the products stem from the same or from associated enterprises

Similarity+: protection of well-known marks

Layers of trademark protection
marketing quality control exclusive link with a sign creation of a brand image product identification distinctive character protection against confusion consumer communication reputation, repute protection against dilution

similarity with a trademark having a reputation
identical, similar and dissimilar 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.’

Dissimilar goods and services
exception to the principle of speciality in case of well-known trademarks

The standard of having a reputation (CJEU, Case C-375/97, ‘Chevy’)
‘The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.’ (para. 24)

‘The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.’ (para. 26)

‘In the absence of any definition [in art. 5(2) of Directive 89/104 EEC] in this respect, a trade mark cannot be required to have a reputation ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of [the Member State].’ (para. 28) …niche reputation (+)

CJEU, 23 October 2003, case C-408/01, Adidas/Fitnessworld Trading
‘It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.’ likelihood of association in the strict sense sufficient

Overview infringement: CJEU distinguishes three situations
damage to the well-known mark: detriment to distinctive character detriment to repute advantage which the alleged infringer derives from the use of a similar sign: unfair advantage of distinctive character or repute

Detriment to distinctive character
‘... when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so.’ CJEU, case C-487/07, L’Oréal/Bellure, para. 39

…for pianos, suits, perfume, books, software
Detriment to distinctive character (+) dilution …for pianos, suits, perfume, books, software

Detriment to repute ‘... when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.’ CJEU, case C-487/07, L’Oréal/Bellure, para. 40

…for fast food, a cleaning detergent, an Amsterdam night club
Detriment to repute …for fast food, a cleaning detergent, an Amsterdam night club

Unfair advantage of distinctive character or repute
‘...relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.’ CJEU, case C-487/07, L’Oréal/Bellure, para. 41

CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure
produces luxury perfumes is the owner of several word marks (Trésor, Miracle, Noa Noa etc.) Bellure: produces cheap imitations of L’Oréal-perfumes uses L’Oréal-word marks in comparison lists

‘... 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 in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.’ (para. 49) = unfair free riding

'Due cause' defence Marks & Spencer
selects the trademark ‘Interflora’ and variants as internet 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
use of a mark with a reputation in keyword advertising implies the taking of an unfair advantage (free riding) ‘...that such a selection can, in the absence of any ‘due cause’ [...], be construed as a use whereby the advertiser rides on the coat-tails of a trade mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige,...’ (para. 89) any ‘due cause’ defence available?

‘By contrast, where the advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark concerned – an alternative to the goods or services of the proprietor of the trade mark with a reputation,...’

‘...it must be concluded that such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned and is thus not without ‘due cause’.’ (para. 91) new type of ‘due cause’ defence for informing consumers about alternatives considerable breathing space for commercial freedom of speech? whole bundle of conditions to be fulfilled!

CJEU, 6 February 2014, case C-65/12, Red Bull/Bulldog

Mr. de Vries runs Bulldog bar/restaurant in Amsterdam started use of the trade name ‘Bulldog’ prior to registration of Red Bull’s trademark registered name as a trademark himself several days after registration of Red Bull trademark started selling energy drinks at some point Red Bull proprietor of the Red Bull trademark trademark acquired high reputation

use may imply unfair free riding, but all circumstances to be considered in particular: own reputation of the Bulldog sign as a balancing factor ‘...requires a determination as to how [the Bulldog] sign has been accepted by, and what its reputation is with, the relevant public.’ (para. 54)

inquiry into the intention of the third party required determination of good faith (para. 56) degree of proximity between goods/services when the sign was first used for an identical product when the mark acquired its reputation

natural extension of the range of services and goods for which that sign already enjoys a certain reputation? ‘...the sale of energy drinks contained in packaging which displays that sign may therefore be perceived, not as an attempt to take advantage of the repute of the mark ‘Red Bull’, but rather as a genuine extension of the range of goods and services offered by Mr de Vries.’ (para. 58)

Without due cause? …written ‘E$$O’

Without due cause?

Limitations

Starting point: use that, in principle, would amount to infringement
limitation? art. 6 TMD ..., provided honest practices in industrial or commercial matters exhaustion? art. 7 TMD ..., provided no legitimate reason of the owner to oppose further sale

Overview art. 6 TMD use own name or address
indications concerning the characteristics of goods or services (descriptive use) necessary to indicate the intended purpose of a product or service, in particular as accessories or spare part (use that refers to a trademark) earlier right which only applies in a particular locality (within the limits of the relevant territory)

Exhaustion

Partitioning of markets
Netherlands: 100 EUR Greece: EUR trademark rights as a weapon against parallel imports? (+) in case of national exhaustion (-) in case of international exhaustion

EU-wide exhaustion (‘communautaire’)
Art. 7(1) TMD ‘The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.’ EU-wide exhaustion (‘communautaire’)

re-packaging (CJEU, July 11, 1996, case C-427/93, BMS/Paranova)
Art. 7(2) TMD ‘…shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.’ re-packaging (CJEU, July 11, 1996, case C-427/93, BMS/Paranova) inappropriate advertising (CJEU, November 4, 1997, case C-337/95, Dior/Evora)

CJEU, July 11, 1996, case C-427/93, BMS/Paranova
To prevent artifical market partitioning, re-packaging is permitted, provided that the original state of the product is not impaired; the presentation of re-packaged products is not detrimental to the repute of the mark; the trademark owner is informed beforehand.

CJEU, November 4, 1997, case C-337/95, Dior/Evora
advertising is indispensable: reseller is permitted to advertise loyalty obligation: reseller must seek to prevent that the advertising is detrimental to the value of the trademark permitted: the advertising that is usual with regard to comparable products in the relevant sector exception: the brand image is damaged seriously

Comparative advertising

CJEU, June 12, 2008, case C-533/06, O2/Hutchison
registered bubbles as a trademark Hutchison: shows in advertising for telecom services black-and-white pictures of moving bubbles compares the price of her services with those of O2

CJEU, June 12, 2008, case C-533/06, O2/Hutchison
‘...must be interpreted to the effect that the proprietor of a registered trade mark is not entitled to prevent the use, by a third party, of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions, laid down in Article 3a(1) of Directive 84/450, under which comparative advertising is permitted.’ (para. 45)

The end. Thank you! For publications, please search for ‘senftleben’ on www.ssrn.com.

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