Recent Trade Mark Decisions of the ECJ and the CFI –

Do they Help or Hinder Enforcement?by Tibor Z. Gold

Partner, Kilburn & Strode

Introduction

There are two tiers of judicial decision-making in the European Community: the Court of First Instance of the European Communities (“CFI”) and the European Court of Justice (“ECJ”), both of which sit in Luxembourg. In addition, by an amendment of the EC Treaty introduced by the Treaty of Nice with the object of relieving the burden on the CFI, judicial panels may be attached to that court to exercise its jurisdiction in specific areas (Arts. 220, 225(a) EC). It is understood that, owing to a very large number of appeals from the Community Trade Marks Office (“OHIM”) to the CFI, such a separate judicial panel is under active consideration for Community Trade Marks (“CTMs”).

The judgments of these courts are binding in matters of law in all the Member States. The procedure of the courts is governed by the statute of the courts of justice and by the rules of procedure.

The ECJ is made up of 25 judges (one for each Member State) and 8 Advocates-General. The judges and Advocates-General are appointed by common accord of the governments of the Member States and hold office for a renewable term of six years. They are chosen from legal experts whose independence is beyond doubt and who possess the qualifications required for appointment to the highest judicial offices in their respective countries or who are of recognised competence. The judges select one of their number to be President of Court for a renewable term of three years.

The Advocates-General assist the court in its task. They deliver, in open court and with complete impartiality and independence, Opinions in all cases, save as otherwise decided by the court where a case does not raise any new points of law.

The ECJ may sit as a full court in a grand chamber of 13 judges or in chambers of 3 or 5 judges.

The ECJ has very wide jurisdiction to hear an enormous variety of types of action. One of its tasks is to offer guidance or clarification of the law arising from references for a preliminary ruling under Article 234 EC from the national courts of the Member States and also on appeals on points of law against decisions of the CFI.

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Thus the ECJ may rule on trade mark related-matters in the following ways:

by way of answering references for a preliminary ruling from the Member States where a provision of the Trade Mark Directive 89/104/EEC is not clear to a national court;

on points of law on appeals in Community Trade Mark matters under Regulation 40/94 from decisions of the CFI which in turn is a second instance of appeal from decisions of OHIM, the first instance being the OHIM Boards of Appeal; and, thirdly,

in competition matters involving trade marks, again from decisions of the CFI.

In the annex of this presentation, I have listed a selection of the most significant decisions of the ECJ. Although strictly I was asked also to comment on the decisions of the CFI, there are probably ten times as many relevant CFI decisions as there are ECJ decisions and, frankly, a proper analysis of them is beyond the scope of a 30-minute presentation. Accordingly, with the indulgence of listeners or readers of this presentation, I will confine my analysis to the decisions of the full ECJ.

A further comment or two is in order.

The judges of the ECJ must, as already stated above, be able to cope with a vast range of legal issues and certainly, with the possible exception for a few years of an Irish judge, none of them have had any legal or commercial experience of trade marks. Clearly therefore the quality of their judgments rely very heavily on the quality of the advocacy and documentation provided to them.

A further comment is that, when it comes to references for preliminary rulings under Article 234 EC, the ECJ by its constitution is not a fact-finding court but an advisory court: it does not decide the case but merely clarifies the relevant point of Community law.

There have been very few “pure” infringement cases, in contrast to competition issues and registrability issues. This is not surprising. After all, we could say that in 1994 a jurisdictionally new “trade mark country” was born, let’s call it “Euro-land”, which had to re-invent trade mark law as taking the best principles of the Member States’ national laws that existed beforehand for over 100 years. The new law is embodied in two pieces of legislation (neither of which could be called a classic of clarity, consistency and faultless logic), namely the above mentioned First Trade Mark Directive 89/104/EEC and the Community Trade Mark Regulation 40/94. Since its coming into force in 1996, the Regulation has been heavily amended in a number of important areas but not, I suggest, in the really fundamental areas.

Still in this introductory mode it should be pointed out that broadly speaking the wording of the Directive and the wording of the Community Trade Mark Regulation are essentially identical when it comes to the fundamental provisions for the conditions for registration (absolute and relative grounds) and for the rights conferred by a registration, and the limitation thereof, see the “pairs” of Articles 3 and 4 of the Directive and Articles 7 and 8 of the Regulation; and Articles 5 and 6 of the Directive and Articles 9, 12 and 13 of the Regulation.

For this reason, we can say that decisions of the ECJ regarding registrability issues can, with a little bit of caution but also with a lot of confidence, be applied to the provisions on

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infringement and vice versa. It also follows that a decision which is particularly difficult to understand or reconcile with earlier ECJ decisions on any particular registrability topic will also haunt practitioners and advisors when it comes to advising clients on infringement.

Analysis of Particular Cases

As I have stated, I have annexed a selected list of cases for the European Court of Justice, which I hope that this audience and readers will find useful. It is of course a selected list and it could have been much longer. But it is relevant also to this: in what now follows, I will be quite critical about the ECJ in a number of cases, yet that number is indeed relatively small to the total. In other words, the ECJ gets a lot of trade mark law right!

A Bad Start

Historically, the biggest initial problem with the ECJ was that it misunderstood the nature of the trade mark and the essential function or specific subject matter that it entails, namely to guarantee to the consumer the origin of the goods that have been put on the market. It took 16 years from the initial and notorious 1974 decision in the case known as ‘HAG I’, Van Zuylen Frères v HAG AG, Case 192/73, to the 1990 revisit of the situation in ‘HAG II’, SA CNL-SUCAL NV v HAG GF AG, Case C-10/89. In 16 years it went from seeing Trade Mark law as something nasty and anti-competitive to an important cornerstone of the Single Market! However, it is not my purpose to lay historical accusations at the ECJ and I move swiftly on to the period when the Directive was implemented by the all the EU Member States and the Community Trade Mark Regulation 40/94 was put into effect. It is only really then that the ECJ assumed its proper role of defining or re-defining the basic concepts of trade mark law.

The Likelihood of Association

For those who enjoy that sort of thing, the travaux préparatoires of the Directive make for interesting reading. Prior to the Directive, it can be said that the most modern national trade mark law within the then EU was the Benelux uniform trade mark law, which had separate concepts both for registrability and for infringement known as the likelihood of association as an addition to the likelihood of confusion. At a very late stage of finalising the text of the Directive, the Benelux delegation persuaded the legislators to make a reference to the likelihood of association but in a curious way: the wording is “the likelihood of confusion, including the likelihood of association”. Much ink has been spilt over the meaning of that innocent English word “including”. The normal interpretation is not that the likelihood of assocation is an alternative or as an addition but rather that it is somehow a sub-set of the likelihood of confusion. But what does that mean? The ECJ no doubt thought it was very clever when it sought neatly to sidestep the problem in the case of Marca Modes CV v Adidas AG and Adidas Benelux B.V., Case C-425/98, by the somewhat Delphic utterance that the Benelux concept of likelihood of assocation per se was not part of Community law; rather, “association serves to define the scope of confusion”. I would like to issue a challenge to this erudite audience as to how it does that – or in other words to explain to me what this statement means!

Now before we can compare this with what happened in another Adidas case, namely Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd, Case C-408/01, we

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need to refer to a case called “Davidoff II” (Davidoff Cie SA and Zino Davidoff SA v Gofkid Limited, Case C-292/00). The Court’s decision in Davidoff II is of course notorious for the breathtaking insouciance with which the ECJ declared that one must construe the Directive not necessarily be reference to its wording but by reference to the overall scheme and objectives of it, though failing to explain what these were, and went on to declare that, just because there is a lack of confusion in a given case, famous marks must be able to rely on Article 5(2) even where the goods are similar.

The difference between the Marca Modes v Adidas case and the Adidas v Fitnessworld case was that, here, the claim against Fitnessworld was not based on Article 5(1)(b) of the Directive but rather on Article 5(2). In Fitnessworld, the Davidoff II concept was further elaborated by positing yet another concept, namely that in the case of famous marks, infringement is to be tested on the basis that a “link” has been evoked in the mind of the public on seeing the alleged infringement with the earlier registered trade mark of reputation. Just what this link is, we are not told. Of course, it is not a word that appears in the Directive or the Regulation. Moreover, having stated, as I explained above, in the Marca Modes v Adidas case that the likelihood of assocation is insufficient without also a likelihood of confusion in the case of “normal” marks, how then is this “link” to be distinguished from the “likelihood of assocation” in the case of marks of repute?

I invite this audience to send me their answers on a postcard and I will hold a ballot from all the answers for a prize of £5.

Descriptiveness / Distinctiveness

On this issue, the ECJ seemed to start well: the Windsurfing decision (Windsurfing Chiemsee Produktions- und Vertriebs GmbH v. Boots- und Segelzubehör Walter Huber and Windsurfing Chiemsee Produktions- und Vertriebs GmbH v. Franz Attenberger, Joined Cases C-108/97 and C-109/97) was generally well received. Then came the famous/infamous decision in “BABY-DRY” (Procter & Gamble v. OHIM, Case C-383/99 P) in which the ECJ came up with a criterion that any “syntactically unusual juxtaposition” qualified for registration; “any perceptible difference” between the words of the mark and the common parlance of the relevant consumers was apt to confer distinctive character.

This decision was widely criticised, not least by one of the main Advocate-Generals in trade mark cases, Señor Ruiz-Jarabo Colomer. Bearing in mind that the BABY-DRY goods were infants’ nappies (diapers), I cannot resist quoting in full a footnote to his Opinion in the subsequent case of “POSTKANTOOR” (Koninklijke KPN Nederland v OHIM, Case C-363/99), a lovely example of “judicial rudeness”:

“Without wishing to get involved in a lengthy marketing discussion, it seems clear that ordinary consumers of disposable nappies would be people of parenting age. Furthermore, according to the judgment, they must also speak English as their mother tongue. Indeed, the Court, unsupported by any external proof, decided to offer its own opinion of the descriptive character of the word combination in question, despite the fact that only one of the Members of the Court was a native English speaker and that all of them appeared to have left that happy stage behind them. In addition, by holding that Baby-dry is an unusual juxtaposition of an expression that is unfamiliar in the English language, the Court adopted an excessively academic view. The Court

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should instead have considered whether the construction was capable of provoking a semantic response, such as This product keeps my baby dry. Finally, had the Court used as a reference point a European consumer of the age indicated, who might have known both words, then it would have been in a position to conclude that the chosen word order corresponds to that used by speakers of Romance languages.”

We are once more on more solid ground with a revisit by the ECJ of the issue in “DOUBLEMINT” (OHIM v Wm. Wrigley Jr. Company, Case C-191/01 P) where in paragraph 32 the Court states:

“In order for [a mark to be refused for descriptiveness], it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of the provision of the Directive and Regulation] itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.”

So, having dipped its toes into a lake in Bavaria, via a hopefully dry nappy, the ECJ stepped on some chewing gum but came to the right end result. But certainly during process enforcement of registrations of borderline descriptive marks was highly uncertain.

“Identical”

When are trade marks identical? The word appears in Article 5(1)(a) of the Directive. This question is not as easy as it appears. Of course, identical does mean strictly identical in the almost mathematical sense, but does it mean more? Does it include, in the case of a word mark, the representation of the word in a different graphical solution and/or colour? Does it cover a minor mis-spelling? And what about the situation known as “swamping”, where a trade mark is swallowed up into a larger and composite mark, e.g. by introducing another word as a prefix? That last question is on its way to resolution because of a recent Opinion of the Advocate-General but, confining my enquiry into “identical” arising from the case of S.A. Société LTJ Diffusion v SA SADAS Vertbaudet, Case C-291/00, the ECJ in 2001 gave the following answer:

‘Identical’ means that the later mark ‘reproduces’ without any modification or addition all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.

Lord Justice Jacobs, perhaps the most eminent of English specialist IP judges, called this explanation “opaque”.

Under normal rules of legal construction where an exception is created from a general proposition, that exception must be construed narrowly. So if the cornerstone of trade mark infringement is the likelihood of confusion, but in the case of identity under Article 5(1)(a) of the Directive confusion is assumed, one would expect the derogation from the need to

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prove likelihood of confusion to be very narrow. Instead, the ECJ felt compelled to introduce a kind of fuzz around the concept of identity by filtering it through the eyes of the average consumer who, as we know from another ECJ definition, is “reasonably well-informed and reasonably observant and circumspect” and, among other things, neither more nor less attentive than typical consumers of the relevant products or services would be. That is to say, the consumer is not expected to have a perfect memory.

Where does that leave us? It leaves us in a difficult, multi-step enquiry. First, identify the average consumer; then try to work out, in the context of the goods or services in question, what level of perfection of memory he or she may have; and then finally work out whether the differences in question would or would not go unnoticed by such a person. Not easy, and clearly gives rise to enforcement issues where the trade mark owner finds it difficult to get evidence of, and cannot safely rely on, confusion being assumed under Article 5(1)(a). I cannot believe the ECJ was thinking realistically in expecting commercial or business people to jump through these hoops.

Colour per se Marks

As has already been stated, many of the ECJ rulings are made in the context of registrabilty and one gets the impression that the ECJ does not have sufficient regard of the consequences of such rulings when it comes to infringement. Colour per se marks illustrate this point perfectly.

Firstly, we had a very extensive, logically well-ordered and well-researched Opinion from Advocate-General Philippe Léger which in effect recommended to the full ECJ not to allow colour per se marks, that is to say marks for a pure colour without reference to any shape of any product, or as without any spatial delimitation. His arguments were well supported from the fields of optics, psychology, physiology (the acuity of the human eye), the variations in perception under different light conditions and distances, and so on. The ECJ declined to follow the Advocate-General and stated that

“In the case of colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.”

No explanation was offered as to what the “exceptional circumstances” might be, and how restricted does the number of goods or services have to be, to be allowed. Furthermore, the ECJ was not well advised about international schemes for defining colours. It thought that these are completely stable and immutable and therefore reference can be made to them, but that is not so. For instances, the well-known Pantone® system, which assigns numbers to colours, changes quite frequently. A trade mark of some age specifying a colour “as per Number XYZ on the Pantone® scale” may well become incomprehensible in time and thus its enforcement highly dubious, when the then-current edition of the Pantone® classification has dropped that particular number or shade.

Even more decisively than the lack of definition of “exceptional circumstances”, there is nothing in the ECJ judgment to assist with regard to infringement/enforcement. How is the likelihood of confusion to be proved when comparing two colours per se? Whether dark

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brown is similar to black or dark grey and can give rise to confusion must depend on the eyesight of the average consumer, the lighting conditions prevailing in the shop and the distance from which the goods are viewed. What kind of rational basis is that for determining commercially vital questions on whether certain goods may remain, or not, on the market under a particular colour per se trade mark?

Again, I am willing to offer more prizes for the solution to this conundrum.

Ducking the Question

Several trade mark cases have been addressed to the ECJ by national courts under the preliminary reference system under Article 234 EC. Some of these references are multi-part questions and occasionally go beyond that which is absolutely necessary to determine the case before the national court. The ECJ exhibits an eagerness not to go beyond clarifying questions which are absolutely necessary in order to determine the question. So, for instance, in the famous case of Koninklijke Philips Electronics BV v Remington Consumer Products Ltd (three-headed shaver), Case C-299/99, the English Court of Appeal addressed seven questions to the ECJ, some of which concerned the registrability of shape marks and others touched on infringement issues. With neat footwork worthy of a star footballer, the ECJ declined to deal with infringement aspects, this time not because they were not relevant to determine the case below, but by deciding that the trade mark registrations were invalid and therefore a discussion of the infringement of those registrations would be a waste of time. Well, ECJ, sooner or later you will have to answer these questions! Why not sooner?

Another example recently was the decision in the case of Praktiker Bau- und Heimwerkermärkte v DPMA, Case C-418/02, where the German court referred three questions to the ECJ, two of which addressed the issue of whether retail services were identifiable services for which registrations could be obtained and, if so, with what precision those services had to be defined. The ECJ answered those two questions and, if I may say so, very sensibly, too. However, the German court also posed a third question, which was the important one of how similarity for the purposes of Article 4(1) of the Directive [registrability and relative grounds of refusal] and Article 5(1) [the extent of rights of the proprietor for infringement purposes] should be judged in the case of a registration for retail services. The ECJ declined to answer, saying grandly that it was not there to deal with hypothetical questions not necessary to determine the case before the national court.

The fact that in the meanwhile marks for retail services will be registered in great number and potential competitors will be left in doubt as to whether they may be infringing, was clearly not a concern of the ECJ.

Inventing New Terms

In my submission, it does not help to clarify enforcement issues when the terms of the Directive are simply replaced with another term which may or may not be an exact synonym. We have already seen above that in the case of marks of repute the ECJ has introduced a new word “link” which I at least cannot distinguish from “association”. Having been taught by the ECJ that the likelihood of assocation is not relevant, the introduction of the new and unexplained term “link” is positively unhelpful, but this is not the only time the ECJ has done this.

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Take the two cases of Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik, Case C-63/97, and Gerolsteiner Brunnen GmbH & Co. v Putsch GmbH, Case C-100/02. The issue here was one of the so-called fair use defences to infringement set out in Article 6(1) of the Directive. Article 6(1) contains three sub-paragraphs describing situations in which a registration shall not entitle its proprietor to prohibit a third party from using, in the course of trade, certain matters, e.g. descriptive terms. These three matters in Article 6(1) are all qualified by the proviso that the defence applies only if the defendant uses the words covered by the exception “in accordance with honest practices in industrial or commercial matters”. This then raises the question of what does “honest” mean? I accept that honesty is not easy to define and I do not envy the ECJ the task it had to accomplish.

What did they do? They but paraphrased “honest” with the concept of the defendant having to “act fairly” in relation to the “legitimate interests of the trade mark owner”.

This to my mind raises questions of uncertainty, making enforcement more difficult. Firstly, it seems to me that the requirement to use a mark or sign in accordance with honest practices is not a duty, a word with strong jurisprudential resonance (duty/right/obligations). Secondly, is it really the case that the concept of honesty is fully equivalent to the concept of a duty to act fairly in relation to the legitimate interests of the trade mark owner? Honesty is an objective test and must relate to society at large, and indeed the very words of the Directive refer to practices in commercial or industrial matters. In other words, the norm involves more than just the trade mark owner’s actions. Thirdly, is it really not possible to act unfairly while also being honest?

Conclusion

In over 40 years the ECJ has learned a great deal about trade marks and we have learned a great deal about the ECJ’s attitude to trade marks. It has been an interactive and iterative education process.

Considering the huge body of law over which the ECJ is supposed to provide definitive answers for the whole of the Community, it is not surprising that the body of non-specialist judges occasionally goes wrong in the field of trade marks. By comparison with what it appears to have got wrong or left us in doubt and even puzzlement, it has got a surprising amount right. Trade mark law in the Community is beginning to take a well-defined shape and if I were to repeat this talk in 10 years’ time I am sure I have fewer criticisms. As things are, I would urge you all to take the above problems of enforcement caused by ECJ judgments side by side with areas not covered here where enforcement in Europe has been made measurably easier. I feel as though I am a strict but affectionate school headmaster looking at a pupil who is learning very fast and who is very intelligent: 9 out of 10, but could do better!

Thank you for your attention.

© Tibor Z. Gold 2005Kilburn & Strode20 Red Lion Street

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London WC1R 4PJUnited Kingdom www.kstrode.co.ukTel: +44 20 7539 4200Fax: +44 20 7539 4299E-mail: tgold@kstrode.co.uk

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Annex

Table of Selected ECJ decisions in Trade Mark matters

Case Date Parties TM / CauseC-353/03 07.07.2005 Société des produits Nestlé SA v

Mars UK LtdHave a break / part of a mark

C-418/02 07.07.2005 Praktiker Bau- und Heimwerkermärkte v DPMA

PRAKTIKER / retail services

C-286/04 P 30.06.2005 Eurocermex v OHIM Bottle and lime wedgeC-228/03 17.03.2005 The Gillette Company and

OthersGILLETTE / spare parts / necessary

C-498/01 P_1 01.12.2004 OHIM v Zapf Creation AG NEW BORN BABYC-16/03 30.11.2004 Peak Holding AB v Axolin-

Elinor ABExhaustion / Putting on market

C-245/02 16.11.2004 Anheuser-Busch Inc. v Budĕjovický Budvar, národní podnik,

BUDWEISER / TRIPS

C-447/02 P 21.10.2004 KWS Saat v OHIM Orange colourC-64/02 P 21.10.2004 OHIM v Erpo Möbelwerk DAS PRINZIP DER

BEQUEMLICHKEIT (slogan)

C-106/03 P 12.10.2004 Vedial v OHIM St HubertC-321/03_1 12.10.2004 Dyson Vacuum cleaner binC-136/02 P 07.10.2004 Mag Instrument v OHIM Torch shapeC-192/03 P_1 05.10.2004 Alcon Inc. v OHIM BSS / genericityC-329/02 P 16.09.2004 SAT.1 SatellitenFernsehen v

OHIMSAT.2

C-404/02 16.09.2004 Nichols NICHOLS (surname)C-445/02 P_1 28.06.2004 Glaverbel SA v OHIM Glass patternC-49/02 24.06.2004 Heidelberger Bauchemie GmbH Colour combinationC-371/02 29.04.2004 Björnekulla Fruktindustrier BOSTONGURKAC-3/03 P_1 28.04.2004 Matratzen Concord v OHIM MATRATZENC-218/01 12.02.2004 Henkel KGaA Packaging / containerC-265/00 12.02.2004 Campina Melkunie BIOMILDC-363/99 12.02.2004 Koninklijke KPN Nederland POSTKANTOORC-150/02 P_1 05.02.2004 Streamserve v OHIM StreamserveC-326/01 P_1 05.02.2004 Telefon & Buch v OHIM Universaltelefonbuch C-259/02_1 27.01.2004 La Mer Technology LA MER / genuine useC-100/02 07.01.2004 Gerolsteiner Brunnen v Putsch

GmbHGERRI / KERRY

C-283/01 27.11.2003 Shield Mark sound markC-115/02 23.10.2003 Rioglass and Transremar RIOGLASS / goods in transitC-408/01 23.10.2003 Adidas-Salomon AG and Adidas

Benelux BV v Fitnessworld Trading Ltd

C-191/01 P 23.10.2003 OHIM v Wm. Wrigley Jr. Company

DOUBLEMINT

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C-408/01 23.10.2003 Adidas-Salomon (anciennement Adidas) and Adidas Benelux

Three stripes

C-361/01 P 09.09.2003 Kik v OHIM (languages)C-108/01 20.05.2003 Consorzio del Prosciutto di

Parma and Salumificio S. RitaParma ham / PDO

C-469/00 20.05.2003 Ravil Grated cheese / PDOC-104/01 06.05.2003 Libertel Groep Single colourC-244/00 08.04.2003 van Doren + Q Parallel import / burden of

proofC-44/01 08.04.2003 Pippig Augenoptik Comparative Advertising

DirectiveC-53/01C-54/01C-55/01

08.04.2003 Linde Shapes: forklift truck

C-291/00 20.03.2003 S.A. Société LTJ Diffusion v SA SADAS Vertbaudet

ARCHUR / ARTHER ET FELICIE

C-40/01 11.03.2003 Ansel MINIMAX / genuine useC-292/00 09.01.2003 Davidoff Cie SA and Zino

Davidoff SA v Gofkid Limited (“Davidoff II”)

Davidoff / Durffee

C-273/00 12.12.2002 Sieckmann CINNAMAT / smell markC-23/01 21.11.2002 Robelco Robeco / Robelco – sign not

used for distinguishing products

C-206/01 12.11.2002 Arsenal Football Club plc v Matthew Reed

ARSENAL / infringing use

C-81/01 24.10.2002 Borie Manoux Wine nameC-104/00 P 19.09.2002 Krankenversicherung v OHIM COMPANYLINEC-433/00 19.09.2002 Aventis Pharma Deutschland Parallel importC-299/99 18.06.2002 Koninklijke Philips Electronics

BV v Remington Consumer Products Ltd

Shape of shaver head

C-2/00 14.05.2002 Hölterhoff SPIRIT SUN / oral useC-143/00 24.04.2002 Boehringer Ingelheim and

OthersParallel import

C-443/99 24.04.2002 Mercke, Sharp & Dohme Parallel importC-414/99C-415/99C-416/99

20.11.2001 Zino Davidoff Parallel import / express consent

C-112/99 25.10.2001 Toshiba Europe Comparative advertisingC-517/99 04.10.2001 Merz & Krell BRAVO / generic to the tradeC-383/99 P 20.09.2001 Procter & Gamble v OHIM BABY-DRYC-89/99 13.09.2001 Schieving-Nijstad and Others TRIPS / provisional measuresC-425/98 22.06.2000 Marca Modes CV v Adidas AG

and Adidas Benelux B.V.Strips / likelihood of assocation

C-383/98 06.04.2000 Polo v Lauren Customs / TransitC-220/98 13.01.2000 Estée Lauder Costmetics Consumer protection /

LIFTINGC-379/97 12.10.1999 Pharmacia & Upjohn

(anciennement Upjohn)Parallel import

C-375/97 14.09.1999 General Motors Corporation CHEVY / well-known mark

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C-173/98 01.07.1999 Sebago and Ancienne Maison Dubois et Fils

SEBAGO / Exhaustion of rights

C-342/97 22.06.1999 Lloyd Schuhfabrik Mayer GmbH & Co v Klijsen Handel B.V

LLOYD / LLOINT

C-255/97 11.05.1999 Pfeiffer Großhandel Competition / trade namesC-108/97C-109/97

04.05.1999 Windsurfing Chiemsee Produktions- und Vertriebs GmbH v. Boots- und Segelzubehör Walter HuberANDWindsurfing Chiemsee Produktions- und Vertriebs GmbH v. Franz Attenberger

CHIEMSEE / distinctive and descriptive marks

C-87/97 04.03.1999 Consorzio per la tutela del formaggio Gorgonzola

GORGONZOLA / CAMBOZOLA; good faith

C-63/97 23.02.1999 Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik

BMW / use in advertising

C-303/97 28.01.1999 Sektkellerei Kessler Consumer protection – sparkling wine

C-77/97 28.01.1999 Österreichischle Unilever Consumer protection / ODOL/ prophylactic claim

C-39/97 29.09.1998 Canon Molkerei GroßbraunshainC-210/96 16.07.1998 Gut Springenheide Tusky / consumer protection /

characteristics of average consumer

C-355/96 16.07.1998 Silhouette International Schmied SILHOUETTE / Exhaustion of rights

C-53/96 16.06.1998 Hermès International TRIPS / provisional measuresC-251/95 11.11.1997 Sabèl B.V. v Puma AG,

Rudolph Dassler SportSABEL / feline figure / likelihood of confusion

C-349/95 11.11.1997 Loendersloot BALLANTINE / parallel importas; relabelling

C-337/95 04.11.1997 Parfums Christian Dior DIOR / mental condition of goods

C-352/95 20.03.1997 Phytheron International SA v Jean Bourdon SA

Parallel import / exhaustion

C-313/94 26.11.1996 F.Ili Graffione SNC v Ditta Fransa

Freedom of movement of goods / prohibition of importation from another Member State of a product bearing a prohibited trade mark

C-9/93 22.06.1994 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH

Splitting of a trade mark as a result of voluntary assignment / free movement of goods

C-427/93C-429/93C-436/93

11.07.1996 Bristol-Myers Squibb / Boehringer / Bayer v Paranova A/S

Repackaging of trade-marked products

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C-315/92 02.02.1994 Verband Sozialer Wettbewerb eV v Clinique Laboratoires SNC et Estée Lauder Cosmetics GmbH

Free movement of goods / misleading consumers – CLINIQUE

C-317/91 30.11.1993 Deutsche Renault AG v AUDI AG

Free movement of goods / national trade mark rights

C-10/89 17.10.1990 SA CNL-SUCAL NV v HAG GF AG (‘HAG II’)

Free movement of goods / specific subject – matter of trade marks –

C-238/89 13.12.1990 Pall Corp. v P.J. Dahlhausen & Co.

Interpretation of EC Treaty; free movement of goods; use of ® symbol

35/83 30.01.1985 BAT Cigaretten-Fabriken GmbH v Commission of the European Communities

TOLTECS / DORCET; competition / agreement not to use trade marks

58/80 22.01.1981 Dansk Supermarked A/S v A/S Imerco

Parallel imports / substandard goods

1/81 03.12.1981 Pfizer Inc. v Eurim-Pharm GmbH

Exhaustion / repackaging

102/77 23.05.1978 Hoffman-La Roche & Co AG v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mbH

Exhaustion / repackaging / parallel imports

119/75 22.06.1976 Société Terrapin (Overseas) Ltd v Société Terranova Industrie CA Käpferer & Co.

Enforcement where there is no confusion; national rights; free movement of goods.

51/75 15.06.1976 EMI Records Limited v CBS United Kingdom Limited

Free movement of goods

16/74 31.10.1974 Centrafarm BV and Adriaan de Peijper v Winthrop BV

Parallel imports / Exhaustion of rights

192/73 03.07.1974 Van Zuylen Frères v HAG AG (‘HAG I’)

‘Common origin’; essential function of a trade mark

40/70 18.02.1971 Sirena S.r.l. v Eda S.r.l. and others

“Specific subject matter”

56/6458/64

13.07.1966 Ets. Gonsten S.à.r.l. and Grundig-Verkaufs-GmbH v Commission of the EEC

“Specific subject matter”

Page 14

Table of Selected ECJ decisions in Trade Mark matters

Case Date Parties TM / CauseC-353/03 07.07.2005 Nestlé Have a break / part of a

markC-418/02 07.07.2005 Praktiker Bau- und

HeimwerkermärktePRAKTIKER / retail services

C-286/04 P 30.06.2005 Eurocermex v OHIM Bottle and lime wedgeC-228/03 17.03.2005 The Gillette Company and

OthersGILLETTE / spare parts / necessary

C-498/01 P_1 01.12.2004 OHIM v Zapf Creation NEW BORN BABYC-16/03 30.11.2004 Peak Holding Exhaustion / Putting on

marketC-245/02 16.11.2004 Anheuser-Busch BUDWEISER / TRIPSC-447/02 P 21.10.2004 KWS Saat v OHIM Orange colourC-64/02 P 21.10.2004 OHIM v Erpo Möbelwerk DAS PRINZIP DER

BEQUEMLICHKEIT (slogan)

C-106/03 P 12.10.2004 Vedial v OHIM St HubertC-321/03_1 12.10.2004 Dyson Vacuum cleaner binC-136/02 P 07.10.2004 Mag Instrument v OHIM Torch shapeC-192/03 P_1 05.10.2004 Alcon v OHIM BSS / genericityC-329/02 P 16.09.2004 SAT.1 SatellitenFernsehen v

OHIMSAT.2

C-404/02 16.09.2004 Nichols NICHOLS (surname)C-445/02 P_1 28.06.2004 Glaverbel v OHIM Glass patternC-49/02 24.06.2004 Heidelberger Bauchemie Colour combinationC-371/02 29.04.2004 Björnekulla Fruktindustrier BOSTONGURKAC-3/03 P_1 28.04.2004 Matratzen Concord v OHIM MATRATZENC-218/01 12.02.2004 Henkel Packaging / containerC-265/00 12.02.2004 Campina Melkunie BIOMILDC-363/99 12.02.2004 Koninklijke KPN Nederland POSTKANTOORC-150/02 P_1 05.02.2004 Streamserve v OHIM StreamserveC-326/01 P_1 05.02.2004 Telefon & Buch v OHIM Universaltelefonbuch C-259/02_1 27.01.2004 La Mer Technology LA MER / genuine useC-100/02 07.01.2004 Gerolsteiner Brunnen v

Putsch GmbHGERRI / KERRY

C-283/01 27.11.2003 Shield Mark sound markC-115/02 23.10.2003 Rioglass and Transremar RIOGLASS / goods in

transitC-191/01 P 23.10.2003 OHIM v Wrigley DOUBLEMINTC-408/01 23.10.2003 Adidas-Salomon

(anciennement Adidas) and Adidas Benelux

Three stripes

C-361/01 P 09.09.2003 Kik v OHIM (languages)C-108/01 20.05.2003 Consorzio del Prosciutto di

Parma and Salumificio S. Rita

Parma ham / PDO

Page 15

C-469/00 20.05.2003 Ravil Grated cheese / PDOC-104/01 06.05.2003 Libertel Groep Single colourC-244/00 08.04.2003 van Doren + Q Parallel import / burden

of proofC-44/01 08.04.2003 Pippig Augenoptik Comparative Advertising

DirectiveC-53/01C-54/01C-55/01

08.04.2003 Linde Shapes: forklift truck

C-291/00 20.03.2003 LTJ Diffusion ARCHUR / ARTHER ET FELICIE

C-40/01 11.03.2003 Ansel MINIMAX / genuine useC-292/00 09.01.2003 Davidoff & Cie and Zino

DavidoffDavidoff / Durffee

C-273/00 12.12.2002 Sieckmann CINNAMAT / smell mark

C-23/01 21.11.2002 Robelco Robeco / Robelco – sign not used for distinguishing products

C-206/01 12.11.2002 Arsenal Football Club ARSENAL / infringing use

C-81/01 24.10.2002 Borie Manoux Wine nameC-104/00 P 19.09.2002 Krankenversicherung v

OHIMCOMPANYLINE

C-433/00 19.09.2002 Aventis Pharma Deutschland Parallel importC-299/99 18.06.2002 Koninklijke Philips

Electronics BV v Remington Consumer Products Ltd

Shape of shaver head

C-2/00 14.05.2002 Hölterhoff SPIRIT SUN / oral useC-143/00 24.04.2002 Boehringer Ingelheim and

OthersParallel import

C-443/99 24.04.2002 Mercke, Sharp & Dohme Parallel importC-414/99C-415/99C-416/99

20.11.2001 Zino Davidoff Parallel import / express consent

C-112/99 25.10.201 Toshiba Europe Comparative advertisingC-517/99 04.10.2001 Merz & Krell BRAVO / generic to the

tradeC-383/99 P 20.09.2001 Procter & Gamble v OHIM BABY-DRYC-89/99 13.09.2001 Schieving-Nijstad and Others TRIPS / provisional

measuresC-425/98 22.06.2000 Marca Mode Strips / likelihood of

assocationC-383/98 06.04.2000 Polo v Lauren Customs / TransitC-220/98 13.01.2000 Estée Lauder Costmetics Consumer protection /

LIFTINGC-379/97 12.10.1999 Pharmacia & Upjohn

(anciennement Upjohn)Parallel import

Page 16

C-375/97 14.09.1999 General Motors Corporation CHEVY / well-known mark

C-173/98 01.07.1999 Sebago and Ancienne Maison Dubois et Fils

SEBAGO / Exhaustion of rights

C-342/97 22.06.1999 Lloyd Schuhfabrik Meyer LLOYD / LLOINTC-255/97 11.05.1999 Pfeiffer Großhandel Competition / trade

namesC-108/97 04.05.1999 Windsurfing Chiemsee CHIEMSEE / distinctive

and descriptive marksC-87/97 04.03.1999 Consorzio per la tutela del

formaggio GorgonzolaGORGONZOLA / CAMBOZOLA; good faith

C-63/97 23.02.1999 BMW v Deenik BMW / use in advertisingC-303/97 28.01.1999 Sektkellerei Kessler Consumer protection –

sparkling wineC-77/97 28.01.1999 Österreichischle Unilever Consumer protection /

ODOL/ prophylactic claim

C-39/97 29.09.1998 Canon Molkerei Großbraunshain

C-210/96 16.07.1998 Gut Springenheide Tusky / consumer protection / characteristics of average consumer

C-355/96 16.07.1998 Silhouette International Schmied

SILHOUETTE / Exhaustion of rights

C-53/96 16.06.1998 Hermès International TRIPS / provisional measures

C-251/95 11.11.1997 Sabèl SABEL / feline figure / likelihood of confusion

C-349/95 11.11.1997 Loendersloot BALLANTINE / parallel importas; relabelling

C-337/95 04.11.1997 Parfums Christian Dior DIOR / mental condition of goods

C-352/95 20.03.1997 Phytheron International SA v Jean Bourdon SA

Parallel import / exhaustion

C-313/94 26.11.1996 F.Ili Graffione SNC v Ditta Fransa

Freedom of movement of goods / prohibition of importation from another Member State of a product bearing a prohibited trade mark

C-9/93 22.06.1994 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH

Splitting of a trade mark as a result of voluntary assignment / free movement of goods

C-427/93C-429/93C-436/93

11.07.1996 Bristol-Myers Squibb / Boehringer / Bayer v Paranova A/S

Repackaging of trade-marked products

Page 17

C-315/92 02.02.1994 Verband Sozialer Wettbewerb eV v Clinique Laboratoires SNC et Estée Lauder Cosmetics GmbH

Free movement of goods / misleading consumers – CLINIQUE

C-317/91 30.11.1993 Deutsche Renault AG v AUDI AG

Free movement of goods / national trade mark rights

C-10/89 17.10.1990 SA CNL-SUCAL NV v HAG GF AG (‘HAG II’)

Free movement of goods / specific subject – matter of trade marks –

C-238/89 13.12.1990 Pall Corp. v P.J. Dahlhausen & Co.

Interpretation of EC Treaty; free movement of goods; use of ® symbol

35/83 30.01.1985 BAT Cigaretten-Fabriken GmbH v Commission of the European Communities

TOLTECS / DORCET; competition / agreement not to use trade marks

58/80 22.01.1981 Dansk Supermarked A/S v A/S Imerco

Parallel imports / substandard goods

1/81 03.12.1981 Pfizer Inc. v Eurim-Pharm GmbH

Exhaustion / repackaging

102/77 23.05.1978 Hoffman-La Roche & Co AG v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mbH

Exhaustion / repackaging / parallel imports

119/75 22.06.1976 Société Terrapin (Overseas) Ltd v Société Terranova Industrie CA Käpferer & Co.

Enforcement where there is no confusion; national rights; free movement of goods.

51/75 15.06.1976 EMI Records Limited v CBS United Kingdom Limited

Free movement of goods

16/74 31.10.1974 Centrafarm BV and Adriaan de Peijper v Winthrop BV

Parallel imports / Exhaustion of rights

192/73 03.07.1974 Van Zuylen Frères v HAG AG (‘HAG I’)

‘Common origin’; essential function of a trade mark

40/70 18.02.1971 Sirena S.r.l. v Eda S.r.l. and others

“Specific subject matter”

56/6458/64

13.07.1966 Ets. Gonsten S.à.r.l. and Grundig-Verkaufs-GmbH v Commission of the EEC

“Specific subject matter”