trademark law ra prof. dr. martin senftleben bird & bird, the hague vu university amsterdam ip...

Trademark Law

RA Prof. Dr. Martin Senftleben

Bird & Bird, The Hague

VU University Amsterdam

IP Law and Management, CEIPI

Strasbourg, January 24, 2015

2

Overview of the IP system

technologycommerce

culture

patent lawtrademark law

copyright law

Legislation

4

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)

5

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)

International (procedural law)

6

• Trademark Directive 89/104/EEC (1988) =

Directive 2008/95/EC (2008)

• Community Trade Mark Regulation (CTMR)

40/94 (1993) = 207/2009

(2009)

European Union

Definition and function

8

‘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)

Distinctive signs

9

producer competitor

consumer

Function (macro): market transparency

ensuring honest commercial practices

consumer protection

contribution to a functioning market

10

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

Function (micro): business strategy

11

product

identification

passive TM

defense

limited to

specific sectors

consumer

communication

active TM

exploitation

TM becomes

a product

exclusive link with a sign

creation of a brand image

marketing

quality control

Function (micro): business strategy

Strategic approach

13

Intelligent legal services

type of trademarkappropriate marketing tool for your target markets?

appropriate basis for strong legal protection?

availability of the trademarkprior rights structure differs from country to country

trademark clearance avoids conflicts

description of goods and servicesdifferent approaches, for instance, in EU and US

requirement of use

14

Intelligent legal services

portfolio management registration and administration costs

languages, dates, trademark monitoring

establishment of a trademark holding?

tax efficiency

brand exploitationinvestment in marketing

enhanced protection of resulting reputation

trademark rights become exploitation rights

selling and licensing of a favorable brand image

15

less costly trademark portfolio

generating extra income =

business asset

Cost effectiveness

16

from the costly defense of

trademark rights

to the creation of exploitable brand value

Successful brand management

Step 1: marketing decisions

18

Checklist

Which signs are desirable from a marketing

perspective?

Which scope of protection is desirable from a

legal perspective?

How to strike a proper balance between these

(potentially competing) goals?

Kinds of marks

20

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.’

21

Visible signs Non-visible signs

words, letters, numerals

drawings, colors, pictures

3Dhologram

motionposition

sound (audio)smell (olfactory)

capable of being represented graphically?

Overview of signs

22

“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”

Words, letters, numerals

23

Drawings, pictures, colors

24

3D Shapes

25

the roar of a lion?

the tune of a mobile phone?

an engine noise?

the smell of fresh-cut green grass?

Audio marks, smell marks

Excluded signs

27

‘[t]he mark consists of a

transparent bin or

collection chamber forming

part of the external surface

of a vacuum cleaner as

shown in the

representation.’

(para. 10)

CJEU, January 25, 2007, case C-321/03, Dyson/Registrar of Trade Marks

28

‘…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

CJEU, January 25, 2007, case C-321/03, Dyson/Registrar of Trade Marks

29

But see also: CJEU, 10 July 2014, case C-421/13, Apple Flagship Store

‘the distinctive design and layout of a retail store’ (para. 9)

30

‘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.’

Excluded signs (art. 3(1)(e) TMD)

31

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

32

‘… 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


33

‘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


34

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

Philips/Remington confirmed

in particular: shape alternatives not decisive

35

Rationale?

technology

commerce

culture

patent law

trademark law

copyright law

36

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

37


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)

38


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)

39


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)

40

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

41

rationales underlying shape exclusions

competition:no monopoly on essential product

characteristics

term extension:no evergreening of rights with limited

period of protection


42


need to safeguard competition in case of shape resulting

from nature of the goods

not only when indispensable (natural and regulated

products) but also when inherent to the generic function

‘…that shapes with essential characteristics which are

inherent to the generic function or functions of such

goods must, in principle, also be denied registration.’

(para. 25)

43


no artificial extension of limited protection in the case of

substantial value shapes

catalogue of essential characteristics

nature of the category of goods concerned

artistic value of the shape in question

dissimilarity from other shapes on the market

substantial price difference

promotion strategy accentuating aesthetic characteristics (para. 35)

44

Similar outcome?

technology

commerce

culture

patent law

trademark law

copyright law

Protection requirements

46

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.’

47

Core requirements

procedural:graphical

representation(register

transparancy)

substantial: distinctive character

(market transparancy)

Graphical representation

49

at issue: registration of a smell mark (cinnamic

acid methyl ester)

‘...that a trade mark may consist of a sign which is

not in itself capable of being perceived visually,

provided that it can be represented graphically,

particularly by means of images, lines or

characters, and that the representation is clear,

precise, self-contained, easily accessible,

intelligible, durable and objective.’

CJEU, 27 December 2002, case C-273/00, Sieckmann

50

in case of an olfactory sign (-)

‘In respect of an olfactory sign, the requirements

of graphic representability are not satisfied by a

chemical formula, by a description in written

words, by the deposit of an odour sample or by

a combination of those elements.’

CJEU, 27 December 2002, case C-273/00, Sieckmann

51

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.’

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

Distinctiveness

53

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

54

Distinctive signs?

indication of product features

‘makes clean’ for a cleaning detergent

use of generic terms

‘apple’ for apples

‘camel’ for camels

... (-)

fanciful signs‘persil’ for a cleaning detergent

signs adopted arbitrarily with regard to the goods or services

‘apple’ for computers

‘camel’ for cigarettes

... (+)

55

may exist from the very beginning (arbitrarily-

chosen, strong trademark)

can be acquired or become stronger through

use (secondary meaning)

but may also decrease (dilution)

may even be lost (trademark becoming a

generic term)

No constant level of distinctiveness

56

secondary meaning

genericism

dilution

Overview of influence factors

(-)

(+)(-)

Need to keep free

58

Marks consisting exclusively of

signs indicating the...

kind, quality, quantity

value, intended purpose

geographical origin

other characteristics of goods/services

Descriptive signs (art. 3(1)(c) TMD)

59

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.’

Public interest

60

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

CJEU, 12 February 2004, case C-265/00, Biomild

Step 2: management decisions

62

Checklist

For which goods and services should the trademark

be protected?

In which markets should the trademark enjoy

protection?

How to obtain and uphold the required protection for

relevant goods and services in these markets?

Registration

64

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)

65

Paris Union

66

filing in one country of the

Paris Union

6 months

filing in other Union countries

Right of priority (art. 4 Paris Convention)

67

patents, industrial designs

trademarks

Term of protection

10 years, as of application (filing date)

indefinitely renewable for further terms of

10 years

Community Trade Mark

69

CTM Registration

application

publication

opposition registrationexaminationconditions of filingabsolute grounds

refusal

relative grounds

70

‘...signs which consist exclusively of:

the shape which results from the nature of the

goods themselves; or

the shape of goods which is necessary to obtain a

technical result; or

the shape which gives substantial value to the

goods.’

Absolute grounds for refusal (art. 7(1)(e) CTMR)

71

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)

72

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


73

deceptive signs

“Orwooola” for goods made 100% of

synthetic material

signs contrary to morality or public order

“Jesus” for jeans

“Cannabia” for foodstuff

Examples

74

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


75

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)

76

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...’

77

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

CJEU, 11 March 2003, case C-40/01, Ajax/Ansul

78


‘…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…’

79


‘…for goods that were sold in the past does not mean

that its use is not genuine, if the proprietor makes

actual use of the same mark for component parts that

are integral to the make-up or structure of such goods,

or for goods or services directly connected with the

goods previously sold and intended to meet the needs

of customers of those goods.’

Registration strategies

81

solution 1:

harmonisation of national procedures

solution 2:

bundle of registrations via central procedure

The problem

national route

file in many Offices

in many languages

fees in many currencies

numerous national agents

results in many national

registrations

requires many renewals

changes to be recorded via

each national Office

solution 3:

transnational trademark law system

82

national OHIM: Community Trade Mark

covers entire EU territory

Madrid System: international registration

Routes to registration

83

Switzerland

‘uncontrolled’ accumulation of

registrations

Streamlining via the EU system?

84

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)

85

A registers

the mark Y.

1.1.20091.1.2007 1.1.2008

B registers the

conflicting mark

YY.

A registers Y as a

CTM. Does he still

have to keep the

earlier registration of

Y in Germany?

Claiming seniority

86

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

87

Switzerland

‘uncontrolled’ accumulation of

registrations

Streamlining via international route?

88

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

89

Madrid Union

90

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)

Overview of the System

91

Certifies particulars in international application = particulars in basic application or basic registration

Checks formalitiesRecords in the International RegisterPublishes in the International GazetteNotifies designated Contracting Parties

substantial examinationwithin

12/18/18+ months

refusal no refusal = effect of a national registration

OFFICE OF ORIGIN

INTERNATIONALBUREAU

OFFICE OFDESIGNATED

CONTRACTINGPARTY

International

Application

national basis: registration (A/P), application (P)

Resulting procedure

92

APSwitzerland

P

AP

P

P

AP

European Community

China

AP

P

Switzerland as a basis

United States

93

P

P

AP

AP

AP

European Union

China

P

Egypt

EU as a basis

Switzerland

P

P

94

first step: designation of Madrid Members in the initial

application

further steps: subsequent designations

(further markets)

Stages of extension

95

one international registration

effect of a bundle of national registrations

efficient managementchanges (name, address, ownership)

renewal

flexibilitysubsequent designations

limitation, renunciation, cancellation

= cost savings

Advantages

Step 3: monitoring and exploitation

97

Checklist

How to monitor the trademark register and the

market in relevant countries?

How to decide on whether or not to take action

against competing signs?

What is the scope of trademark rights?

Trademark rights

99

‘...The registered trade mark shall confer on

the proprietor exclusive rights therein. The

proprietor shall be entitled to prevent all third

parties not having his consent from using in

the course of trade: [...]’

Exclusive right: art. 5(1) TMD

100

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

Exclusive right: art. 5(3) TMD

101

…between the mark and the sign?

b. similarity

a. identity

…between the goods and services?

c. similarity+

Layers of trademark protection

Identity: absolute protection

103

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

104

Protected trademark functions

CJEU, June 18, 2009, case C-487/07,

L’Oréal/Bellure:

‘These functions include not only the essential function

of the trade mark, which is to guarantee to consumers

the origin of the goods or services, but also its other

functions, in particular that of guaranteeing the quality of

the goods or services in question and those of

communication, investment or advertising.’ (para. 58)

Confusion: similarity

108

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

109

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.

110

aural

Claeryn/Klarein

visual

Bally/Baileys

conceptual

Mars/Venus

differences can

compensate

similar features:

Obelix/Mobilix

Similarity between sign and trademark

111

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)

112

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)

113

Sabel: application in Germany

Puma: opposition

CJEU, 11 November 1997, case C-251/95

114

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

CJEU, 11 November 1997, case C-251/95, Puma/Sabel

Similarity+:protection of well-

known marks

116

Layers of trademark protection

product

identification

distinctive

character

protection

against confusion

consumer

communication

reputation,

repute

protection

against dilution

exclusive link with a sign

creation of a brand image

marketing

quality control

117

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.’

118

exception to the

principle of speciality

in case of well-known

trademarks

Dissimilar goods and services

119

‘The public amongst which the earlier trade mark

must have acquired a reputation is that concerned

by that trade mark, that is to say, depending on

the product or service marketed, either the public

at large or a more specialised public, for example

traders in a specific sector.’ (para. 24)

The standard of having a reputation (CJEU, Case C-375/97, ‘Chevy’)

120

‘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)


121

‘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 (+)


122

‘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

CJEU, 23 October 2003, case C-408/01,Adidas/Fitnessworld Trading

123

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

Overview infringement: CJEU distinguishes three situations

124

‘... 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

Detriment to distinctive character

125

dilution

(+)

…for pianos, suits, perfume, books, software

Detriment to distinctive character

126

‘... 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.’


Detriment to repute

127

…for fast food, a cleaning

detergent, an Amsterdam night club

Detriment to repute

128

‘...relates not to the detriment caused to the mark but

to the advantage taken by the third party as a result

of the use of the identical or similar sign. It covers, in

particular, cases where, by reason of a transfer of the

image of the mark or of the characteristics which it

projects to the goods identified by the identical or

similar sign, there is clear exploitation on the coat-

tails of the mark with a reputation.’


Unfair advantage of distinctive character or repute

129

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

CJEU, June 18, 2009, case C-487/07,L’Oréal/Bellure

130


131

‘... 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


132

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’

'Due cause' defence

133

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

134

‘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,...’


135

‘...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!


136

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

137


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

138


139


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)

140


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

141


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)

142

…written ‘E$$O’

Without due cause?

143

Without due cause?

Limitations

145

limitation?

art. 6 TMD

..., provided

honest practices in

industrial or commercial

matters

exhaustion?

art. 7 TMD

..., provided

no legitimate reason of

the owner to oppose

further sale

Starting point: use that, in principle, would amount to infringement

146

Overview art. 6 TMD

use own name or address

indications concerning the characteristics of goods

or services (descriptive use)

necessary to indicate the intended purpose of a

product or service, in particular as accessories or

spare part (use that refers to a trademark)

earlier right which only applies in a particular

locality (within the limits of the relevant territory)

Exhaustion

148

Partitioning of markets

trademark rights as a weapon against parallel

imports?

(+) in case of national exhaustion

(-) in case of international exhaustion

Netherlands: 100 EUR

Greece: 75 EUR

149

‘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’)

Art. 7(1) TMD

150

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)

151

To prevent artifical market partitioning,

re-packaging is permitted, provided that

the original state of the product is not impaired;

the presentation of re-packaged products is not

detrimental to the repute of the mark;

the trademark owner is informed beforehand.

CJEU, July 11, 1996, case C-427/93, BMS/Paranova

152

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

CJEU, November 4, 1997, case C-337/95, Dior/Evora

Comparative advertising

154

• 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

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

155

‘...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)

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

The end. Thank you!For publications, please search

for ‘senftleben’ on

www.ssrn.com.

[email protected]

trademark law ra prof. dr. martin senftleben bird & bird, the hague vu university amsterdam ip...

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