IP Law and Management, CEIPI
Strasbourg, February 17, 2014
Trademark Law
RA Prof. Dr. Martin Senftleben
Bird & Bird, The Hague
VU University Amsterdam
Overview of the IP system
culture
copyright law
commerce
trademark law
technology
patent law
2
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)
4
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)
5
European Union
• Trademark Directive 89/104/EEC (1988) =
Directive 2008/95/EC (2008)
• Community Trade Mark Regulation (CTMR)
40/94 (1993) = 207/2009 (2009)
6
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)
8
Function (macro): market transparency
ensuring honest commercial practices
consumer protection
contribution to a functioning market
producer
competitor
consumer
9
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
10
Function (micro): business strategy
exclusive link
with a sign
marketing
quality control
creation of a
brand image
product
identification
consumer
communication
passive TM
defense
active TM
exploitation
limited to
specific sectors
TM becomes
a product
11
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
13
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
14
Cost effectiveness
less costly
trademark
portfolio
generating extra
income =
business asset
15
Successful brand management
to the creation
of exploitable
brand value
from the costly
defense of
trademark rights
16
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?
18
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.’
20
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?
21
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”
22
Drawings, pictures, colors
23
3D Shapes
24
Audio marks, smell marks
the roar of a lion?
an engine noise?
the tune of a mobile
phone?
the smell of freshcut green grass?
25
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)
27
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
28
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.’
29
CJEU, June 18 2002, case C-299/99,
Philips/Remington
30
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
31
CJEU, June 18 2002, case C-299/99,
Philips/Remington
‘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
32
CJEU, 14 September 2010, case
C-48/09 P, Lego/OHIM (Mega Brands)
Philips/Remington confirmed
in particular: shape alternatives not decisive
33
Rationale?
culture
copyright law
commerce
trademark law
technology
patent law
34
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
35
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)
36
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
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)
37
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
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)
38
But still room for trademark rights with
regard to other types of cultural material
copyright protection limited in time
term extension via trademark law?
accumulation of rights possible in many cases
39
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.’
41
Core requirements
procedural:
graphical
representation
(register
transparancy)
substantial:
distinctive
character
(market
transparancy)
42
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.’
44
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.’
45
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.’
46
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
48
Distinctive signs?
indication of
product features
fanciful signs
‘persil’ for a cleaning
detergent
‘makes clean’ for a
cleaning detergent
signs adopted
arbitrarily with
regard to the
goods or services
use of generic
terms
‘apple’ for apples
‘camel’ for camels
‘apple’ for computers
‘camel’ for cigarettes
... (-)
... (+)
49
No constant level of distinctiveness
may exist from the very beginning (arbitrarilychosen, 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)
50
Overview of influence factors
(-)
(+)
(-)
genericism
secondary meaning
dilution
51
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
53
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.’
54
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
55
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?
57
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)
59
Paris Union
60
Right of priority (art. 4 Paris Convention)
filing in
other Union
countries
filing in one
country of the
Paris Union
6 months
61
Term of protection
10 years, as of application (filing date)
indefinitely renewable for further terms of
10 years
patents, industrial designs
trademarks
62
Community Trade Mark
CTM Registration
publication
application examination opposition
relative
conditions
grounds
of filing
absolute
grounds
64
refusal
registration
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.’
65
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)
66
Absolute grounds for refusal
(art. 7 CTMR)
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
67
Examples
deceptive signs
“Orwooola” for goods made 100% of
synthetic material
signs contrary to morality or public order
“Jesus” for jeans
“Cannabia” for foodstuff
68
Absolute grounds for refusal
(art. 7 CTMR)
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
69
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)
70
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...’
71
CJEU, 11 March 2003,
case C-40/01, Ajax/Ansul
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
72
CJEU, 11 March 2003,
case C-40/01, Ajax/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…’
73
CJEU, 11 March 2003,
case C-40/01, Ajax/Ansul
‘…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.’
74
Registration strategies
The problem
national route
solution 1:
harmonisation of
national procedures
file in many Offices
in many languages
fees in many currencies
solution 2:
numerous national agents
bundle of registrations
via central procedure
results in many national
registrations
requires many renewals
solution 3:
changes to be recorded via
each national Office
transnational trademark
law system
76
Routes to registration
OHIM:
Community
Trade Mark
national
covers entire
EU territory
Madrid System:
international registration
77
Streamlining via the EU system?
Switzerland
‘uncontrolled’
accumulation of
registrations
78
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)
79
Claiming seniority
1.1.2007
A registers
the mark Y.
1.1.2008
B registers the
conflicting mark
YY.
80
1.1.2009
A registers Y as a
CTM claiming the
seniority of the earlier
identical mark in
respect of 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
81
Streamlining via international
route?
Switzerland
‘uncontrolled’
accumulation of
registrations
82
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
83
Madrid Union
84
Overview of the System
Madrid Agreement (A)
Madrid Agreement of April 14, 1891
Madrid Protocol (P)
Madrid Protocol of June 27, 1989
common regulations
administrative instructions
national law (Madrid interface)
85
Resulting procedure
national basis: registration (A/P), application (P)
OFFICE OF
ORIGIN
INTERNATIONAL
BUREAU
OFFICE OF
DESIGNATED
CONTRACTING
PARTY
Certifies particulars in international
application = particulars in basic
application or basic registration
Checks formalities
Records in the International Register
Publishes in the International Gazette
Notifies designated Contracting Parties
substantial examination
within
12/18/18+
months
no refusal = effect of
refusal
a national registration
86
Switzerland as a basis
P
P
United States
AP
AP
P
P
European Community
Switzerland
AP
AP
China
87
EU as a basis
P
AP
Egypt
P
P
P
AP
Switzerland
European Union
P
AP
China
88
Stages of extension
first step:
further steps:
designation of Madrid
Members in the initial
application
subsequent
designations
(further markets)
89
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
90
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?
92
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: [...]’
94
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
95
Layers of trademark protection
a. identity
b. similarity
c. similarity+
…between the mark and the sign?
…between the goods and services?
96
Identity:
absolute protection
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
98
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)
99
Confusion: similarity
101
102
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
103
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.
104
Similarity between sign and trademark
aural
differences can
compensate
Claeryn/Klarein
similar features:
visual
Obelix/Mobilix
Bally/Baileys
conceptual
Mars/Venus
105
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)
106
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)
107
CJEU, 11 November 1997, case C-251/95
Sabel:
application
in Germany
Puma:
opposition
108
CJEU, 11 November 1997,
case C-251/95, Puma/Sabel
‘(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);’
109
CJEU, 11 November 1997,
case C-251/95, Puma/Sabel
‘(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).’
110
Overview
risk of confusion
indirect risk of
confusion/association
risk of association
111
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
112
Similarity+:
protection of wellknown marks
Layers of trademark protection
exclusive link
with a sign
marketing
quality control
creation of a
brand image
product
identification
consumer
communication
distinctive
character
reputation,
repute
protection
against confusion
protection
against dilution
114
Similarity+
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.’
115
Dissimilar goods and services
exception to the
principle of speciality
in case of well-known
trademarks
116
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)
117
The standard of having a reputation
(CJEU, Case C-375/97, ‘Chevy’)
‘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)
118
The standard of having a reputation
(CJEU, Case C-375/97, ‘Chevy’)
‘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 (+)
119
Which kind of link between sign and mark?
risk of confusion
indirect risk of
confusion/association
risk of association
120
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
121
Overview infringement:
CJEU distinguishes three situations
damage to the well-known mark:
1) detriment to distinctive character
2) detriment to repute
advantage which the alleged infringer derives
from the use of a similar sign:
3) unfair advantage of distinctive character or
repute
122
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
123
Detriment to distinctive character
(+)
dilution
…for pianos, suits,
perfume, books, software
124
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
125
Detriment to repute
…for fast food,
a cleaning
detergent, an
Amsterdam
night club
126
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 coattails of the mark with a reputation.’
CJEU, case C-487/07, L’Oréal/Bellure, para. 41
127
CJEU, June 18, 2009, case C-487/07,
L’Oréal/Bellure
L’Oréal:
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
128
CJEU, June 18, 2009, case C-487/07,
L’Oréal/Bellure
129
CJEU, June 18, 2009, case C-487/07,
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 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
130
'Due cause' defence
Marks & Spencer
selects the trademark
‘Interflora’ and variants
as internet 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’
131
CJEU, 22 September 2011, case C-323/09,
Interflora/Marks & Spencer
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)
132
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?
133
CJEU, 22 September 2011, case C-323/09,
Interflora/Marks & Spencer
‘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,...’
134
CJEU, 22 September 2011, case C-323/09,
Interflora/Marks & Spencer
‘...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!
135
Without due cause?
…written
‘E$$O’
136
Without due cause?
137
Limitations
Starting point: use that, in principle,
would amount to infringement
limitation?
exhaustion?
art. 6 TMD
art. 7 TMD
..., provided
..., provided
honest practices in
no legitimate reason of
industrial or commercial
the owner to oppose
matters
further sale
139
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)
140
Exhaustion
Partitioning of markets
Netherlands:
100 EUR
Italy:
90 EUR
Greece:
75 EUR
trademark rights as a weapon against parallel
imports?
(+) in case of national exhaustion
(-) in case of international exhaustion
142
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’)
143
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)
144
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.
145
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
146
Comparative advertising
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 the price of her services with
those of O2
148
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)
149
Keyword advertising
150
Keyword advertising
trademark owner: obliged to invest in sponsored links?
competitor: unfair free-riding with sponsored links?
search engine: profiting from trademark reputation?
trademark
owner
competitor
search engine
151
CJEU, 23 March 2010, case C-236/08,
Google/Louis Vuitton
Louis Vuitton:
owns the reputable trademarks ‘Louis Vuitton’,
‘Vuitton’ and ‘LV’
Google
permits use of these marks as AdWords for
websites offering counterfeit Louis Vuitton products
AdWords service allows combination of the marks
with search terms indicating counterfeit products,
such as ‘imitation’, ‘reproduction’ and ‘copy’
152
CJEU, 23 March 2010, case C-236/08,
Google/Louis Vuitton
search engine
advertiser
use of the trademark (-) use of the trademark (+)
safe harbour for hosting?
infringement?
‘…where that service provider ‘…where that advertisement
has not played an active role
of such a kind as to give it
knowledge of, or control over,
the data stored.’
does not enable an average
internet user, or enables that
user only with difficulty, to
ascertain [the origin].’
153
The end. Thank you!
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