1. Fundamentals of IP Law HANKEN, September 2015 EU Trademark Law: Scope of Protection Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

2. introduction general infringement criteria specific infringement criteria –identity –similarity –enhanced protection of trademarks with a reputation general limitations Contents

3. Introduction

4. …of conflicting signs? similarity+ similarity identity …of goods or services involved? Several layers of protection

5. comparison between: –trademark as registered and –sign as used in trade no direct comparison: perception of marks in the mind of the average consumer reasonably well-informed and reasonably observant and circumspect consumer of the product concerned Similarity between trademark and sign

6. overall impression, instead of focus on details Similarity between trademark and sign

7. aural –Claeryn/Klarein visual –Bally/Baileys conceptual –Mars/Venus differences can compensate similar features: –Obelix/Mobilix decisive: overall impression Similarity between trademark and sign

8. trademarksign same letter type, letters D and ff in the same characteristic form similarity (+) ECJ 9 January 2003, case C-292/00, Davidoff/Gofkid

9. =when consumers perceive the goods or services as being related to each other CJEU: all relevant factors relating to those goods or services should be taken into account, including –nature, intended purpose, method of use –whether they are in competition with each other or are complementary –(case C-39/97, Canon/Cannon, para. 23) Similarity between goods or services

10. General infringement criteria

11. General prerequisites ‘in the course of trade’ business activity ‘in relation to goods or services’ use as a trademark Two general use requirements

12. affixing the sign to the goods or to the packaging thereof; offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; importing or exporting the goods under the sign; using the sign on business papers and in advertising Examples (Art. 5(3) TMD)

13. CJEU, 23 March 2010, case C-236/08, Google/Louis Vuitton: ‘The use of a sign identical with a trade mark constitutes use in the course of trade where it occurs in the context of commercial activity with a view to economic advantage and not as a private matter.’ (para. 50) = low threshold, often readily assumed Flexible notion of use in trade

14. Impact on the public domain? can be used to confine trademark protection to commercial activities can imply exemption of use for –private purposes –educational purposes –cultural purposes –religious activities –political debate low threshold appropriate?

15. BMW: –sells cars in the Benelux via an exclusive network of official dealers –owns trademark rights relating to BMW R.K. Deenik: –garage owner specialising in sale and repair of (second hand) BMW cars –does not belong to the official dealer network –uses the BMW trademark in his advertising (‘specialist in BMW’) Flexible notion of use in relation to goods or services

16. ‘The advertiser uses the BMW mark to identify the source of the goods in respect of which the services are supplied, and thus to distinguish those goods from any others in respect of which the same services might have been provided.’ (para. 39) even referential trademark use is relevant trademark use use need not aim at distinguishing the advertiser’s own goods or services ECJ, 23 February 1999, case C-63/97, BMW/Deenik

17. CJEU, June 12, 2008, case C-533/06, O2/Hutchison 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

18. ‘With such an advertisement the advertiser seeks to distinguish his goods and services by comparing their characteristics with those of competing goods and services…’ (para. 35) =use in relation to goods or services excessive control over communication concerning the trademark? rules on comparative advertising as an external counterbalance CJEU, June 12, 2008, case C-533/06, O2/Hutchison

19. Louis Vuitton: –holder of the trademarks ‘Louis Vuitton’ and ‘LV’ Google –offers services allowing use of these trademarks as search terms for sponsored links –combination with terms indicating counterfeit goods possible (‘reproduction’, ‘copy’, ‘imitation’) –services are used for advertisements concerning counterfeit Louis Vuitton products CJEU, 23 March 2010, case C-236/08, Google/Louis Vuitton

21. CJEU, 23 March 2010, case C-236/08, Google/Louis Vuitton: ‘…such use exists in any event where the third party uses the sign identical with the trade mark in such a way that a link is established between that sign and the goods marketed or the services provided by the third party.’ (para. 72) = low threshold, often readily assumed Flexible notion of use in relation to goods or services

22. But not everybody is a user Search engine: NO ‘…creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign.’ (para. 57) Advertiser: YES ‘...use by an advertiser […] as a keyword in the context of an internet referencing service falls within the concept of use ‘in relation to goods or services’...’ (para. 73)

23. Louis Vuitton v. Nadia Plesner Plesner: Darfurnica (2010)

24. Specific infringement criteria: identity

25. Art. 5(1)(a) TMD 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;…

26. identical signsidentical goods or services adverse effect on one of the protected trademark functions Identity

27. ‘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 but showing of ‘adverse effect’ required CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure

28. Essential origin function ECJ, 12 November 2002, case C-206/01, Arsenal/Reed ‘In that context, the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.’ (para. 48)

29. Arsenal FC: –holder of trademarks for outer clothing, sports clothing and footwear –sale of souvenirs and memorabilia is important source of income Matthew Reed: –sells unofficial Arsenal scarves in his stall –uses signs to inform customers that scarves are unofficial products –is a big fan of Arsenal FC Essential origin function

30. ‘Even on the assumption that such a notice may be relied on by a third party as a defence to an action for trade mark infringement, there is a clear possibility in the present case that some consumers, in particular if they come across the goods after they have been sold by Mr Reed and taken away from the stall where the notice appears, may interpret the sign as designating Arsenal FC as the undertaking of origin of the goods.’ (para. 57) ECJ, 12 November 2002, case C-206/01, Arsenal/Reed

31. use of identical sign for identical goods endangers the guarantee of commercial origin (essential function of the mark) protection includes ‘post-sale confusion’ even if use is meant to indicate support for the trademark owner ECJ, 12 November 2002, case C-206/01, Arsenal/Reed

32. Advertising function CJEU, 12 November 2002, case C-236- 238/08, Google/Louis Vuitton ‘Since the course of trade provides a varied offer of goods and services, the proprietor of a trade mark may have not only the objective of indicating, by means of that mark, the origin of its goods or services, but also that of using its mark for advertising purposes designed to inform and persuade consumers.’ (para. 91)

33. ‘...when internet users enter the name of a trade mark as a search term, the home and advertising page of the proprietor of that mark will appear in the list of the natural results, usually in one of the highest positions on that list.’ (para. 97) advertising function not affected CJEU shields keyword advertisers from excessive protection following from broad function theory CJEU, 23 March 2010, cases C-236- 238/08, Google/Louis Vuitton

34. Investment function CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer ‘In addition to its function of indicating origin and, as the case may be, its advertising function, a trade mark may also be used by its proprietor to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.’ (para. 60)

35. Different from advertising function? CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer ‘Although that function of a trade mark – called the ‘investment function’ – may overlap with the advertising function, it is none the less distinct from the latter. Indeed, when the trade mark is used to acquire or preserve a reputation, not only advertising is employed, but also various commercial techniques.’ (para. 61)

36. Communication function CJEU, #, case C-#, #/# ‘???’ (para. #)

37. Specific infringement criteria: similarity

38. Art. 5(1)(b) TMD The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade : b)any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;…

39. identical or similar signs identical or similar goods or services likelihood of confusion, likelihood of association sufficient?... the likelihood of confusion includes the likelihood of association between the sign and the trade mark... Similarity

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

41. ‘(1) where the public confuses the sign and the mark in question (likelihood of direct confusion);’ ‘(2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association);’ ECJ, 11 November 1997, case C-251/95, Puma/Sabel

42. ‘(3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense).’ ECJ, 11 November 1997, case C-251/95, Puma/Sabel

43. risk of confusion risk of association indirect risk of confusion/association Overview

44. 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 ECJ, 11 November 1997, case C-251/95, Puma/Sabel

46. risk of confusion to be assessed globally: –from the perspective of the relevant public –with regard to the goods or services involved relevant factors: –degree of similarity between the trademark and the conflicting sign –degree of similarity between the goods or services involved –the degree of distinctive character of the mark ECJ 22 June 1999, case C-342/97, Lloyd/Loint’s

47. broader protection because of greater capacity to distinguish ‘…the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings.’ (para. 22) ECJ 22 June 1999, case C-342/97, Lloyd/Loint’s

48. interdependency of the factors –similarity between trademark and sign –similarity between goods or services –the mark’s capacity to distinguish high degree of similarity between trademark and sign may compensate low degree of similarity between goods or services and vice versa ECJ 29 September 1998, case C-39/97, Canon/Cannon

49. the more distinctive the earlier mark, the greater the likelihood of confusion (ECJ, case C-251/95, Puma/Sabel, para. 24) the more distinctive the earlier mark, the broader the field of similar goods/services (ECJ, case C-39/97, Canon/Cannon, para. 19) Influence of distinctive character

50. Specific infringement criteria: marks with a reputation

51. identification distinctive character protection against confusion communication reputation/ repute protection against dilution exclusive link with a sign creation of a brand image advertising quality control Additional protection interests

52. incentive rationale? (need for stimulating investment?) reward rationale? (comparable to authors, inventors?) enhanced competition on mature markets more attractive products due to brand experience Good reasons for extending protection?

53. Art. 5(2) TMD Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and…

54. Departure from the principle of speciality Protection with regard to dissimilar goods and services

55. trademarkconflicting sign similar goods/services (+) association (+), risk of confusion unclear ECJ: protection against dilution also in case of identical/similar goods/services ECJ, 9 January 2003, case C-292/00, Davidoff/Gofkid

56. Art. 5(2) TMD can also be asserted when the conflicting sign is used for identical or similar goods or services: ‘On this point, it has not been seriously disputed before the Court that, where a sign is used for identical or similar goods or services, a mark with a reputation must enjoy protection which is at least as extensive as where a sign is used for non-similar goods and services.’ (para. 26) ECJ, 9 January 2003, case C-292/00, Davidoff/Gofkid

57. General Motors: –Owner of the Benelux trademark ‘Chevy’ –registered in 1971 for motor vehicles Yplon: –also owns a Benelux trademark ‘Chevy’ –registered that mark in 1988 for washing agents and different cleaning detergents ECJ, 14 September 1999, case C-375/97, ‘Chevy’

58. ‘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) ECJ, 14 September 1999, case C-375/97, ‘Chevy’

59. ‘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) ECJ, 14 September 1999, case C-375/97, ‘Chevy’

60. ‘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) ECJ, 14 September 1999, case C-375/97, ‘Chevy’ …niche reputation sufficient

61. Territoriality

62. CJEU, 6 October 2009, case C-301/07, Pago/Tirolmilch

63. CTM requires reputation in a substantial part of the Community (para. 27) single Member State may be sufficient ‘As the present case concerns a Community trade mark with a reputation throughout the territory of a Member State, namely Austria, the view may be taken, regard being had to the circumstances of the main proceedings, that the territorial requirement imposed by Article 9(1)(c) of the Regulation is satisfied.’ (para. 29)

64. Blurring, tarnishment, unfair free-riding

65. Art. 5(2) TMD …where the latter has a reputation in the Member State and 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.

66. trademark having a reputation dissimilar and identical/similar 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.’ Art. 5(2) TMD

67. risk of confusion risk of association indirect risk of confusion/association Overview

68. ‘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 ECJ, 23 October 2003, case C-408/01, Adidas/Fitnessworld Trading

69. damage to distinctive character (blurring) damage to repute (tarnishment) taking unfair advantage of distinctive character or repute (free-riding) Art. 5(2) TMD Three distinct anti-dilution actions

70. dilution (+) Damage to distinctive character …for pianos, clothing, perfume, books, software

71. ‘…the gradual whittling away or dispersion of the identity and the hold upon the public mind of the mark or name by its use upon non-competing goods.’ (Schechter, Harvard Law Review 1927) objective: safeguarding the exclusive link in the minds of consumers Dilution theory

72. Intel Corporation: –owner of a UK registration of the trademark ‘INTEL’ for computers etc. –mark has a reputation for microprocessors –seeks invalidation of the CPM trademark CPM: –owner of the trademark ‘INTELMARK’ for marketing en telemarketing services CJEU 27 november 2008, case C-252/07, Intel/CPM

73. ‘...such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.’ (para. 29) = erosion of immediate association CJEU 27 november 2008, case C-252/07, Intel/CPM

74. extension to weakening of the immediate association with a particular commercial origin (risk of becoming generic) ‘...detriment is caused to the distinctive character of a trade mark with a reputation when the use of a sign identical with or similar to that mark reduces the ability of the mark to distinguish the goods or services of its proprietor from those which have a different origin.’ (para. 76) CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

75. ‘At the end of the process of dilution, the trade mark is no longer capable of creating an immediate association, in the minds of consumers, with a specific commercial origin.’ (para. 76) CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

76. immediate association with goods/services (Intel/CPM) immediate association with commercial origin (Interflora/ Marks & Spencer) Expansion of the concept of dilution by blurring?

77. problem: how to prove damage? ‘...that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.’ (para. 77) = too high a treshold? CJEU 27 november 2008, case C-252/07, Intel/CPM

78. CJEU, 14 November 2013, case C-383/12 P, Environmental Manufacturing/Elmar Wolf

79. change in behaviour is objective condition ‘The concept of ‘change in the economic behaviour of the average consumer’ lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient in itself…’ (para. 37)

80. CJEU, 14 November 2013, case C-383/12 P, Environmental Manufacturing/Elmar Wolf no evidence of actual detriment required serious risk following from logical deductions is sufficient ‘None the less, such deductions must not be the result of mere suppositions but […] must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.’ (para. 43)

81. …for fast food, a toilet cleaning detergent, a lousy night club in Amsterdam Damage to reputation

82. ‘…a sign similar to the trademark used […] under such circumstances that prejudice to the trademark owner may be caused by encroaching upon the trademark’s potential for raising a desire to buy…’ (Benelux Court of Justice, case A74/1, 1 March 1975, Claeryn/Klarein) Power of attraction

83. marketing strategy: product diversification –creation of a positive trademark image that may be applied universally –application of this image to various, more or less related goods/services trademark becomes the product investment in the trademark and exploitation of the resulting brand value Relation with brand value

84. ‘...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.’ (para. 40) CJEU, 18 June 2009, case C-487/07, L’Oréal/Bellure

85. damage brought to the mark with a reputation advantage taken from the mark with a reputation Different perspectives

86. Taking unfair advantage of distinctive character or repute

87. L’Oréal: –Produces luxury perfume –owns several word marks with a reputation (Trésor, Miracle, Noa Noa etc.) Bellure: –produces cheap imitations of L’Oréal- perfumes –uses L’Oréal marks in comparison lists CJEU, 18 June 2009, case C-487/07, L’Oréal/Bellure

88. ‘...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 detriment required Low threshold for unfair free riding

89. Defence of ‘due cause’

90. ‘…where use of [a sign similar to a trademark having a reputation] without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’ (Art. 5(2) TMD) Defence: ‘due cause’

92. Benelux Court of Justice, 1 March 1975, Claeryn/Klarein: particularly strong need to use this particular sign own right to use the sign that need not give way to the right of the trademark owner Defence: ‘due cause’

93. evidence of ‘strong need’ required? Benelux standard = EU standard?

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

95. purpose of selecting a trademark with a reputation is to take advantage of that mark’s distintive character and repute ‘In fact, that selection is liable to create a situation in which the probably large number of consumers using that keyword to carry out an internet search for goods or services covered by the trade mark with a reputation will see that competitor’s advertisement displayed on their screens.’ (para. 86) CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

96. 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? CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

97. ‘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,...’ CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

98. ‘...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 but several conditions to be fulfilled CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

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

100. 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

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

102. not only objectively over- riding reasons but also subjective third party interests Basis for due cause defence?

103. CJEU, 6 February 2014, case C-65/12, Red Bull/Bulldog no strong need required but balancing of interests ‘...to strike a balance between the interests in question by taking account, in the specific context of Article 5(2) of Directive 89/104 and in the light of the enhanced protection enjoyed by that mark, of the interests of the third party using that sign.’ (para. 46)

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

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

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

107. no recognition of a right to the registered trademark but obligation of the trademark owner to tolerate competing use Result of a finding of due cause

108. …same colours and letter type, but written as ‘E$$O’ Without due cause?

109. ‘It is calm above the tree tops somewhere a cow is bellowing. Moo!’ (German Supreme Court, 3 February 2005, case I ZR 159/02, ‘Lila Postkarte’) Freedom of speech

110. Without due cause?

111. General limitations of exclusive rights

112. ‘Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.’ (Art. 17 TRIPS) =two-step test in trademark law Much breathing space

113. exception? –Art. 6 TMD..., unless –use is not in accordance with honest practices exhaustion? –Art. 7 TMD..., unless –owner has legitimate reasons to oppose Starting point: actionable use

114. Exceptions

115. use of own name or address use of indications concerning characteristics of goods or services (descriptive use) use necessary to indicate the intended purpose of a product or service (accessories and spare parts) recognized earlier right which only applies in a particular locality (trade names) Overview of exceptions

116. Use of own name or address

117. Céline SA: –creates and markets clothing and fashion accessories –owner of the word mark ‘Céline’ for clothes and shoes that was registered in 1948 Céline SARL: –is a company registered in 1992 –invokes registration of a clothing business in 1950 trading as ‘Céline’ to support its right to trade as ‘Céline’ ECJ, 11 September 2007, case C ‑ 17/06, Céline

119. exclusive trademark rights name rights of natural and legal persons Balancing of interests

120. use need not necessarily constitute use ‘in relation to goods or services’ ‘Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive.’ (para. 21) in this case, no actionable use as a trademark and no exception required ECJ, 11 September 2007, case C ‑ 17/06, Céline

121. but broad notion of ‘use in relation to goods or services’: link with goods sufficient ‘In addition, even where the sign is not affixed [to the marketed goods], there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party.’ (para. 23) ECJ, 11 September 2007, case C ‑ 17/06, Céline

122. exception inapplicable if false impression of a commercial link is intended ‘in assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the use of the third party’s name is understood by the relevant public […] as indicating a link between the third party’s goods or services and the trade-mark proprietor […], and secondly of the extent to which the third party ought to have been aware of that.’ (para. 34) ECJ, 11 September 2007, case C ‑ 17/06, Céline

123. exception inapplicable if profit is derived from the reputation of the trademark ‘Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which the third party might profit in marketing his goods or services.’ (para. 34) ECJ, 11 September 2007, case C ‑ 17/06, Céline

124. Indication of product characteristics

125. Gerolsteiner: –bottles and markets mineral water and soft drinks in Germany –owns word and figurative marks relating to the word ‘GERRI’ Putsch: –markets soft drinks in Germany bearing labels including the words ‘KERRY Spring’ –the drinks are manufactured in Ballyferriter in County Kerry, Ireland, using water from a spring called ‘Kerry Spring’ ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch

126. exclusive trademark rights freedom to inform about geographical origin of goods Balancing of interests

127. risk of confusion is insufficient to deny use in accordance with honest practices ‘The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices.’ (para. 25) ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch

128. but assessment of individual circumstances required ‘Since the case concerns bottled drinks, the circumstances to be taken into account by [the national] court would include in particular the shape and labelling of the bottle in order to assess, more particularly, whether the producer of the drink bearing the indication of geographical origin might be regarded as unfairly competing with the proprietor of the trade mark.’ (para. 26) ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch

130. Indication of intended purpose

131. ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories Gillette Company: –markets razors composed of a handle and a replaceable blade and such blades on their own –owner of the trademarks ‘Gillette’ and ‘Sensor’ LA-Laboratories: –sells comparable razor system under the trademark ‘Parason Flexor’ –packaging of the blades has affixed to it a sticker with the word ‘All Parason Flexor and Gillette Sensor handles are compatible with this blade’

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

133. exclusive trademark rights free movement of goods and freedom to provide services Balancing of interests

134. ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories use falling within the scope of the exception ‘…the marks of which the Gillette Company is the owner being used by a third party 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)

135. ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories but also showing of a need to use the trademark required ‘In addition, it is sufficient to note that such use of a trade mark is necessary in cases where that information cannot in practice be communicated to the public by a third party without use being made of the trade mark of which the latter is not the owner.’ (para. 35) potential alternative to be considered: technical standards or norms

136. ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories compliance with honest practices? ‘In that regard, use of the trade mark will not comply with honest practices in industrial or commercial matters where, first, it is done in such a manner that it may give the impression that there is a commercial connection between the reseller and the trade mark proprietor.’ (para. 42) ‘Nor may such use affect the value of the trade mark by taking unfair advantage of its distinctive character or repute’ (para. 43)

137. ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories compliance with honest practices? ‘...use of the trade mark will not be in accordance with Article 6(1)(c) of Directive 89/104 if it discredits or denigrates that mark.’ (para. 44) ‘…where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner, such use of that mark does not comply with honest practices…’ (para. 45)

138. on its merits duty to act fairly in respect of the legitimate interests of the trademark owner ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

139. Relevant factors: global presentation of the product of the third party way in which the trademark is included in this presentation way in which a distinction is made between the trademark and the sign of the third party effort made to prevent consumer confusion ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

140. Exhaustion

141. trademark rights as a weapon against parallel imports? Yes, in case of national exhaustion No, in case of international exhaustion Netherlands: 100 EUR Greece: 75 EUR Partitioning of markets?

142. ‘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.’ (Art. 7(1) TMD) EU-wide exhaustion

143. ‘...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.’ (Art. 7(2) TMD) …unless legitimate reasons

144. Re-packaging – a legitimate reason?

145. Bristol-Myers Squibb, Boehringer, Bayer: –market drugs in several EU Member States –have registered their trademarks in Denmark Paranova: –buys drugs in EU Member States with relatively low prices and sells those drugs in Denmark where prices are higher –uses new packaging showing the trademarks of the original producers and information that the drugs have been imported and re-packaged ECJ, July 11, 1996, case C-427/93 etc., BMS/Paranova

146. 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. establishment of an individual set of rules for the pharmaceutical sector ECJ, July 11, 1996, case C-427/93 etc., BMS/Paranova

147. Advertising – a legitimate reason?

148. Parfums Christian Dior: –markets perfume through network of approved retailers who are obliged to sell exclusively to end consumers –perfume packaging (Poison, Dune etc.) enjoys trademark and copyright protection Evora (Kruidvat): –sells imported Dior products without being an official retailer –includes pictures of the packaging in its advertising leaflets ECJ, November 4, 1997, case C-337/95, Dior/Evora

150. protection of a prestigious brand image free movement of goods in the internal market Balancing of interests

151. advertising is indispensable: reseller is permitted to advertise ‘If the right to prohibit the use of his trade mark in relation to goods […] is exhausted once the goods have been put on the market by himself or with his consent, the same applies as regards the right to use the trade mark for the purpose of bringing to the public’s attention the further commercialization of those goods.’ (para. 36) otherwise free movement of goods impeded ECJ, November 4, 1997, case C-337/95, Dior/Evora

152. but duty to act fairly reseller must seek to prevent detriment to the value of the trademark ‘The damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of Article 7(2) of the Directive, allowing the proprietor to oppose further commercialization of goods which have been put on the market in the Community by him or with his consent.’ (para. 43) ECJ, November 4, 1997, case C-337/95, Dior/Evora

153. permitted: advertising that is usual in the relevant sector ‘However, the fact that a reseller […] uses for trade- marked goods the modes of advertising which are customary in his trade sector, even if they are not the same as those used by the trade mark owner himself or by his approved retailers, does not constitute a legitimate reason…’ (para. 46) exception: advertising that seriously damages the brand image ECJ, November 4, 1997, case C-337/95, Dior/Evora

154. Summary

155. exception? –Art. 6 TMD..., unless –use is not in accordance with honest practices exhaustion? –Art. 7 TMD..., unless –owner has legitimate reasons to oppose Starting point: actionable use = duty to act fairly

156. Unwritten exception: comparative advertising

157. 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

158. ‘With such an advertisement the advertiser seeks to distinguish his goods and services by comparing their characteristics with those of competing goods and services…’ (para. 35) =use in relation to goods or services use in comparative advertising thus potentially infringing appropriate defence available? CJEU, June 12, 2008, case C-533/06, O2/Hutchison

159. creation of a further exception basis: EU legislation on misleading and comparative advertising ‘...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) CJEU, June 12, 2008, case C-533/06, O2/Hutchison

160. Art. 3a(1) Directive 84/450/EEG (= Art. 4 Directive 2006/114/EG ‘Comparative advertising shall […] be permitted when the following conditions are met: a) it is not misleading […];… d) it does not create confusion in the market place […];… e) it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor;… g) it does not take unfair advantage of the reputation of a trade mark […];… h) it does not present goods or services as imitations or replicas […].’

161. The end. contact: m.r.f.senftleben@vu.nl