NON CONFUSION INFRINGEMENT

Transcription

1 NON CONFUSION INFRINGEMENT

2 NON CONFUSION INFRINGEMENT Professor Charles Gielen

3 NON CONFUSION INFRINGEMENT Professor Charles Gielen AIPPI Milan July 2008

4 Why non-confusion?

5 Why non-confusion?

6 Why non-confusion? Why not dilution?

7 Why non-confusion? Why not dilution? Dilution is only one form of nonconfusion infringement

8 Why non-confusion? Why not dilution? Dilution is only one form of nonconfusion infringement Another one is taking unfair advantage of the repute of the mark

9 US Trademark Dilution Revision Act 2006 the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

10 Non-confusion in Europe

11 Non-confusion in Europe Rationale: see CFI Mineral Spa 2008

12 Non-confusion in Europe Rationale: see CFI Mineral Spa 2008 Art. 4(3) and 5(2) Directive

13 Non-confusion in Europe Rationale: see CFI Mineral Spa 2008 Art. 4(3) and 5(2) Directive To be interpreted by ECJ (Davidoff and adidas)

14 Non-confusion in Europe Rationale: see CFI Mineral Spa 2008 Art. 4(3) and 5(2) Directive To be interpreted by ECJ (Davidoff and adidas) Implemented in almost all jurisdictions

15 Non-confusion in Europe Rationale: see CFI Mineral Spa 2008 Art. 4(3) and 5(2) Directive To be interpreted by ECJ (Davidoff and adidas) Implemented in almost all jurisdictions Art. 8(5) and 9(1)(c) CTM Regulation

16 The key issues

17 The key issues Oppose registration or use in the course of trade of a sign

18 The key issues Oppose registration or use in the course of trade of a sign - identical or similar

19 The key issues Oppose registration or use in the course of trade of a sign - identical or similar - to a reputed mark

20 The key issues Oppose registration or use in the course of trade of a sign - identical or similar - to a reputed mark - registered for dissimilar products, if

21 The key issues Oppose registration or use in the course of trade of a sign - identical or similar - to a reputed mark - registered for dissimilar products, if - without due cause

22 The key issues Oppose registration or use in the course of trade of a sign - identical or similar - to a reputed mark - registered for dissimilar products, if - without due cause

23 The key issues

24 The key issues - unfair advantage is taken of, or

25 The key issues - unfair advantage is taken of, or - detriment is caused to

26 The key issues - unfair advantage is taken of, or - detriment is caused to - the distinctiveness or

27 The key issues - unfair advantage is taken of, or - detriment is caused to - the distinctiveness or - repute of the mark

28 The key issues - unfair advantage is taken of, or - detriment is caused to - the distinctiveness or - repute of the mark

29 The key issues - unfair advantage is taken of, or - detriment is caused to - the distinctiveness or - repute of the mark No confusion required (adidas/ Fitness World)

30 Similarity?

31 Similarity? ECJ in adidas/fitnessworld (2003):

32 Similarity? ECJ in adidas/fitnessworld (2003): It is sufficient for the degree of similarity (in visual, aural or conceptual respect, G.) 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.

33 Similarity? ECJ in adidas/fitnessworld (2003): It is sufficient for the degree of similarity (in visual, aural or conceptual respect, G.) 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. So: if there is association, there is similarity

34 Similarity link

35 Similarity link High Court 2006 L Oreal/Bellure

36 Similarity link High Court 2006 L Oreal/Bellure

37 Similarity link High Court 2006 L Oreal/Bellure

38 Similarity link High Court 2006 L Oreal/Bellure

39 Link?

40 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark

41 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark What factors need to be taken into account to establish a link?

42 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark What factors need to be taken into account to establish a link? Other than Jacob, AG Sharpston on June 26:

43 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark What factors need to be taken into account to establish a link? Other than Jacob, AG Sharpston on June 26: Bringing to mind = link

44 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark What factors need to be taken into account to establish a link? Other than Jacob, AG Sharpston on June 26: Bringing to mind = link Link=association=connection

45 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark What factors need to be taken into account to establish a link? Other than Jacob, AG Sharpston on June 26: Bringing to mind = link Link=association=connection Link must be the result of similarity not of something else such as market leadership

46 Link? The UK reference (May 15, 2007) to ECJ in re. Intel/Intelmark What factors need to be taken into account to establish a link? Other than Jacob, AG Sharpston on June 26: Bringing to mind = link Link=association=connection Link must be the result of similarity not of something else such as market leadership

47 No link Hague District Court 6 December 2005 PEPSI

48 Reputation

49 Reputation ECJ (Chevy) 1999: known by a significant part of the public concerned by the products covered by the mark

50 Reputation ECJ (Chevy) 1999: known by a significant part of the public concerned by the products covered by the mark Not required that reputation exists throughout the territory of the Member State (or European Union?): substantial part suffices (compare also ECJ (TARRAGONA) 2007)

51 Reputation

52 Reputation Pago/Tirolmilch Q s posed by Austrian Supreme Court

53 Reputation Pago/Tirolmilch Q s posed by Austrian Supreme Court Is a mark reputed in the entire EU if it is reputed in only one member state

54 Reputation Pago/Tirolmilch Q s posed by Austrian Supreme Court Is a mark reputed in the entire EU if it is reputed in only one member state If not, can on the basis of such a reputed an injunction be granted for one member state

55 Reputation Pago/Tirolmilch Q s posed by Austrian Supreme Court Is a mark reputed in the entire EU if it is reputed in only one member state If not, can on the basis of such a reputed an injunction be granted for one member state Think of ECJ in Chevy:

56 Reputation Pago/Tirolmilch Q s posed by Austrian Supreme Court Is a mark reputed in the entire EU if it is reputed in only one member state If not, can on the basis of such a reputed an injunction be granted for one member state Think of ECJ in Chevy: It is sufficient for a Benelux trade mark to have a reputation in a substantial part of the Benelux territory, which part may consist of a part of one of the Benelux countries

57 Reputation

58 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused

59 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused How to prove: see for example:

60 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused How to prove: see for example: BoA OHIM 2006 R 759/ Spa Monopole

61 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused How to prove: see for example: BoA OHIM 2006 R 759/ Spa Monopole BoA OHIM 2005 R 1204/ Absolut

62 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused How to prove: see for example: BoA OHIM 2006 R 759/ Spa Monopole BoA OHIM 2005 R 1204/ Absolut OHIM 2005 B Karat/Egekarat on survey evidence

63 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused How to prove: see for example: BoA OHIM 2006 R 759/ Spa Monopole BoA OHIM 2005 R 1204/ Absolut OHIM 2005 B Karat/Egekarat on survey evidence Not sufficient:

64 Reputation Chevy: The stronger the distinctive character and reputation the easier it will be to accept that detriment is caused How to prove: see for example: BoA OHIM 2006 R 759/ Spa Monopole BoA OHIM 2005 R 1204/ Absolut OHIM 2005 B Karat/Egekarat on survey evidence Not sufficient: CFI 2004 T-8/03 Emidio Tucci

65 Similar or dissimilar products

66 Similar or dissimilar products ECJ 2003 Davidoff/Durffee: protection also in case of similar products (teleological interpretation contra legem!)

67 Similar or dissimilar products ECJ 2003 Davidoff/Durffee: protection also in case of similar products (teleological interpretation contra legem!) Examples:

68 Similar or dissimilar products ECJ 2003 Davidoff/Durffee: protection also in case of similar products (teleological interpretation contra legem!) Examples: Dutch Supreme Court 1977 Monopoly/Antimonopoly

69 Similar or dissimilar products ECJ 2003 Davidoff/Durffee: protection also in case of similar products (teleological interpretation contra legem!) Examples: Dutch Supreme Court 1977 Monopoly/Antimonopoly District Court Zutphen 2004 Viagra/ Sigra

70 Dilution and similar products

71 Dilution and similar products SWIFT v. SWIFTPAY

72 Dilution and similar products SWIFT v. SWIFTPAY both for financial services

73 Dilution and similar products SWIFT v. SWIFTPAY both for financial services Court Den Bosch 2006

74 Dilution and similar products SWIFT v. SWIFTPAY both for financial services Court Den Bosch 2006 RED BULL v. BULLFIGHTER

75 Dilution and similar products SWIFT v. SWIFTPAY both for financial services Court Den Bosch 2006 RED BULL v. BULLFIGHTER Both for energy drinks

76 Dilution and similar products SWIFT v. SWIFTPAY both for financial services Court Den Bosch 2006 RED BULL v. BULLFIGHTER Both for energy drinks Court Brussels 2006

77 Dilution and similar products SWIFT v. SWIFTPAY both for financial services Court Den Bosch 2006 RED BULL v. BULLFIGHTER Both for energy drinks Court Brussels 2006

78 Due cause

79 Due cause Former Benelux law: only due cause if

80 Due cause Former Benelux law: only due cause if there is such a necessity to use a particular sign that it cannot be reasonably expected that the user desists from using it: almost never accepted, or if

81 Due cause Former Benelux law: only due cause if there is such a necessity to use a particular sign that it cannot be reasonably expected that the user desists from using it: almost never accepted, or if the user has prior rights (like use as a trade name)

82 Due cause

83 Due cause No decisions by ECJ yet, but due cause

84 Due cause No decisions by ECJ yet, but due cause accepted in District Court The Hague 2006 adidas/nike: use of stripes as decoration = valid reason to use and in BoA 2004 R-816/ Pollini: prior use as trade name

85 Due cause No decisions by ECJ yet, but due cause accepted in District Court The Hague 2006 adidas/nike: use of stripes as decoration = valid reason to use and in BoA 2004 R-816/ Pollini: prior use as trade name denied in BoA 2006 R-428/ Tissot: same principle as prior Benelux law: the fact that the mark originates from someone with the name Tissot is not sufficient

86 Likelihood of harm?

87 Likelihood of harm? In the context of opposition case likelihood of harm is sufficient as long as such likelihood is not purely theoretical (CFI in Citibank/Citi 2008), but

88 Likelihood of harm? In the context of opposition case likelihood of harm is sufficient as long as such likelihood is not purely theoretical (CFI in Citibank/Citi 2008), but In infringement cases the law says: unfair advantage is taken of or detriment is caused: actual damage?

89 Likelihood of harm? In the context of opposition case likelihood of harm is sufficient as long as such likelihood is not purely theoretical (CFI in Citibank/Citi 2008), but In infringement cases the law says: unfair advantage is taken of or detriment is caused: actual damage? No: see art. 16(3) TRIPs: probably

90 Likelihood of harm? In the context of opposition case likelihood of harm is sufficient as long as such likelihood is not purely theoretical (CFI in Citibank/Citi 2008), but In infringement cases the law says: unfair advantage is taken of or detriment is caused: actual damage? No: see art. 16(3) TRIPs: probably Confirmed by CoA The Hague 2002 and Brussels 2003

91 Detriment to distinctiveness

92 Detriment to distinctiveness AG Jacobs: The essence is that the blurring of the distinctiveness of the mark means that it is no longer capable of arousing immediate association with the goods for which it is registered and used.

93 Detriment to distinctiveness AG Jacobs: The essence is that the blurring of the distinctiveness of the mark means that it is no longer capable of arousing immediate association with the goods for which it is registered and used. CoA London Intel/Intelmark: 3rd question: AG Sharpston

94 Detriment to distinctiveness AG Jacobs: The essence is that the blurring of the distinctiveness of the mark means that it is no longer capable of arousing immediate association with the goods for which it is registered and used. CoA London Intel/Intelmark: 3rd question: AG Sharpston Mark does not have to be unique

95 Detriment to distinctiveness AG Jacobs: The essence is that the blurring of the distinctiveness of the mark means that it is no longer capable of arousing immediate association with the goods for which it is registered and used. CoA London Intel/Intelmark: 3rd question: AG Sharpston Mark does not have to be unique No effect on economic behaviour necessary

96 Detriment to distinctiveness

97 Detriment to distinctiveness Not accepted in SPA (mineral water) v. SPA-FINDERS (travel agency services); CFI 2005 T-67/04

98 Detriment to distinctiveness Not accepted in SPA (mineral water) v. SPA-FINDERS (travel agency services); CFI 2005 T-67/04 Not accepted in VIPS (restaurant services) v. VIPS (computer programs for restaurants); CFI 2007 T-215/03

99 Detriment to distinctiveness

100 Detriment to distinctiveness CFI 2008

101 Detriment to distinctiveness CFI 2008 CAMEL for tobaccoproducts

102 Detriment to distinctiveness CFI 2008 CAMEL for tobaccoproducts vs.

103 Detriment to distinctiveness CFI 2008 CAMEL for tobaccoproducts vs. CAMELO for coffee

104 Detriment to distinctiveness CFI 2008 CAMEL for tobaccoproducts vs. CAMELO for coffee - Camels and piramides: weak

105 Detriment to distinctiveness CFI 2008 CAMEL for tobaccoproducts vs. CAMELO for coffee - Camels and piramides: weak - No detriment

106 Detriment to repute

107 Detriment to repute AG Jacobs: often referred to as degradation or tarnishment of the mark, describes the situation where the goods for which the infringing sign is used appeal to the public's senses in such a way that the trade mark's power of attraction is affected

108 Detriment to repute AG Jacobs: often referred to as degradation or tarnishment of the mark, describes the situation where the goods for which the infringing sign is used appeal to the public's senses in such a way that the trade mark's power of attraction is affected Benelux Court of Justice: Claeryn/ Klarein

109 Detriment to repute

110 Detriment to repute HOLLYWOOD (chewing gum) v. HOLLYWOOD (tobacco products); BoA 2001 R283/1999-3

111 Detriment to repute HOLLYWOOD (chewing gum) v. HOLLYWOOD (tobacco products); BoA 2001 R283/ DERBI (motor- and bicycles) v. DERBY QUEEN (gambling machines); BoA 2006 R334/2005-2

112 Detriment to repute

113 Detriment to repute Court The Hague 2001

114 Detriment to repute Court The Hague 2001

115 Detriment to repute Court The Hague 2001

116 Taking unfair advantage

117 Taking unfair advantage AG Jacobs (quoting F. Mostert s book): exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation'

118 Taking unfair advantage AG Jacobs (quoting F. Mostert s book): exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation' Difference between the two not obvious

119 Taking unfair advantage AG Jacobs (quoting F. Mostert s book): exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation' Difference between the two not obvious Of repute: Daewoo, the Rolls Royce under the Korean cars

120 Taking unfair advantage AG Jacobs (quoting F. Mostert s book): exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation' Difference between the two not obvious Of repute: Daewoo, the Rolls Royce under the Korean cars Of distinctiveness: skyping with us is cheaper

121 Taking unfair advantage

122 Taking unfair advantage ABSOLUT (wodka) v. ABSSOLUTE (eyglasses); BoA 2005 R1204/2004-1

123 Taking unfair advantage ABSOLUT (wodka) v. ABSSOLUTE (eyglasses); BoA 2005 R1204/ MARIE CLAIRE (fashion magazine) v. MARIE CLAIRE (clothing); CoA The Hague and Paris 2006

124 Taking unfair advantage ABSOLUT (wodka) v. ABSSOLUTE (eyglasses); BoA 2005 R1204/ MARIE CLAIRE (fashion magazine) v. MARIE CLAIRE (clothing); CoA The Hague and Paris 2006 IGNIS (for electronic household appliances) v. IGNIS (vehicles); BoA 2006 R550/2004-4

125 Taking unfair advantage

126 Taking unfair advantage TDK (apparatus for recording)

127 Taking unfair advantage TDK (apparatus for recording)

128 Taking unfair advantage TDK (apparatus for recording) vs.

129 Taking unfair advantage TDK (apparatus for recording) vs.

130 Taking unfair advantage TDK (apparatus for recording) vs. TDK (clothing);

131 Taking unfair advantage TDK (apparatus for recording) vs. TDK (clothing);

132 Taking unfair advantage TDK (apparatus for recording) vs. TDK (clothing); (CFI February 2007 T-477/04)

133 TDK: sponsorship activities in sporting field

134 TDK: sponsorship activities in sporting field

135 TDK: sponsorship activities in sporting field Future risk of the taking of unfair advantage by the applicant of the reputation

136 TDK: sponsorship activities in sporting field Future risk of the taking of unfair advantage by the applicant of the reputation

137 TDK: sponsorship activities in sporting field Future risk of the taking of unfair advantage by the applicant of the reputation

138 TDK: sponsorship activities in sporting field Future risk of the taking of unfair advantage by the applicant of the reputation

139 TDK: sponsorship activities in sporting field Future risk of the taking of unfair advantage by the applicant of the reputation

140 TDK: sponsorship activities in sporting field Future risk of the taking of unfair advantage by the applicant of the reputation Source picture: <

141 Taking unfair advantage

142 Taking unfair advantage NASDAQ (financial services)

143 Taking unfair advantage NASDAQ (financial services)

144 Taking unfair advantage NASDAQ (financial services) vs.

145 Taking unfair advantage NASDAQ (financial services) vs.

146 Taking unfair advantage NASDAQ (financial services) vs. NASDAQ (device mark for sportswear and clothing);

147 Taking unfair advantage NASDAQ (financial services) vs. NASDAQ (device mark for sportswear and clothing); CFI May 2007 T-47/06

148 NASDAQ: image transfer

149 NASDAQ: image transfer Future risk of unfair advantage: transfer of modernity image of NASDAQ to sports equipment/ high-tech composite materials

150 Unfair advantage

151 CFI 2008: Unfair advantage

152 Unfair advantage CFI 2008: CITIBANK for financial services

153 Unfair advantage CFI 2008: CITIBANK for financial services vs. CITI for customs agency services

154 Unfair advantage CFI 2008: CITIBANK for financial services vs. CITI for customs agency services - High repute of CITIBANK

155 Unfair advantage CFI 2008: CITIBANK for financial services vs. CITI for customs agency services - High repute of CITIBANK - Natural overlap of clients

156 Unfair advantage CFI 2008: CITIBANK for financial services vs. CITI for customs agency services - High repute of CITIBANK - Natural overlap of clients - Relationship between services

157 Unfair advantage

158 CFI 2008: Unfair advantage

159 Unfair advantage CFI 2008: Spa (mineral waters etc.) vs. Mineral Spa (soaps, perfumes, body care)

160 Unfair advantage CFI 2008: Spa (mineral waters etc.) vs. Mineral Spa (soaps, perfumes, body care) - Risk of transfer of image

161 Unfair advantage CFI 2008: Spa (mineral waters etc.) vs. Mineral Spa (soaps, perfumes, body care) - Risk of transfer of image - Overlap of public

162 Unfair advantage CFI 2008: Spa (mineral waters etc.) vs. Mineral Spa (soaps, perfumes, body care) - Risk of transfer of image - Overlap of public - Products are not so different

163 Unfair advantage CFI 2008: Spa (mineral waters etc.) vs. Mineral Spa (soaps, perfumes, body care) - Risk of transfer of image - Overlap of public - Products are not so different - Similar messages conveyed: health, beaty, purity and richness in minerals

164 Action available

165 Action available Mostly identical marks

166 Action available Mostly identical marks Inherent distinctiveness (no 2nd thoughts)

167 Action available Mostly identical marks Inherent distinctiveness (no 2nd thoughts) No theoretical likelihood of damage

168 Action available Mostly identical marks Inherent distinctiveness (no 2nd thoughts) No theoretical likelihood of damage In cases of

169 Action available Mostly identical marks Inherent distinctiveness (no 2nd thoughts) No theoretical likelihood of damage In cases of Icon marks

170 Action available Mostly identical marks Inherent distinctiveness (no 2nd thoughts) No theoretical likelihood of damage In cases of Icon marks Antagonism

171 Action available Mostly identical marks Inherent distinctiveness (no 2nd thoughts) No theoretical likelihood of damage In cases of Icon marks Antagonism Related products

172 THANKS!

173 THANKS!