EUROPEAN TRADEMARK CASE BEFORE THE COURT OF JUSTICE AN OVERVIEW DORTE WAHL

Transcription

1 EUROPEAN TRADEMARK CASE BEFORE THE COURT OF JUSTICE AN OVERVIEW DORTE WAHL

2 INTRODUCTION European trademark case law before the Court of Justice An overview of decisions, Autumn 2008 Autumn 2010 Content and purpose 2

3 UPDATE : NOVEMBER 2008 SEPTEMBER 2010 Trademarks on the internet adwords: 3 decisions Well known marks: 3 decisions Genuine use: 2 decisions Consent: 2 decision Bad faith: 1 decision 3

4 TRADE MARKS ON THE INTERNET ADWORDS (1) Google (C-236/08-C-238/08) Google ctr Louis Vuitton et al - decided 23 March, 2010 Background: Google s paid search and advertising service AdWords Teachings: 1. Google s liability: 1. the provider of a search and advertising service (like AdWords) is not itself making use in the course of trade of the trademark, (accordingly) 2. the provider is without liability, unless 3. the provider plays an active role (giving him knowledge of or control over the data stored) or 4. the provider fails immediately to take action (i.e. remove or disable access) when being informed about the unlawful nature of the data. 4

5 TRADE MARKS ON THE INTERNET ADWORDS (2) Google teachings continued 2. The advertiser s liability: In case of use of adwords being identical with the trademarks and being used in relation to identical goods and services, the trademark owner can prohibit such use, if an average internet consumer is not able to, or only with difficulty is able to ascertain whether the goods advertised originate from the trademark proprietor or from a third party not being connected to the trademark proprietor. 5

6 TRADE MARKS ON THE INTERNET ADWORDS (3) BergSpechte (C-278/08) decided 25 March, 2010 The same conclusion as in the Google case, with one minor addition: The trademark owner can prohibit the advertiser s use of adwords which are not only identical but also similar to the trademarks and which are used in relation to identical goods and services, again, provided that it is not possible or only with difficulty possible for the average internet consumer to ascertain whether the goods advertised originate from the trademark proprietor or from a third party. 6

7 TRADE MARKS ON THE INTERNET ADWORDS (4) Portakabin (C-558/08), decided 8 July 2010 The same conclusion as in the Google and BergSpechte decisions: The trademark owner can prohibit the advertiser s use of adwords which are identical with or similar to the trademark and which are used in relation to identical goods and services, provided it is not possible or only with difficulty possible for the average internet consumer to ascertain whether the goods advertised originate from the trademark owner or from a third party. 7

8 TRADE MARKS ON THE INTERNET ADWORDS (5) (Portakabin teachings continued) Portakabin deals with a few extra questions: The advertiser s possibility of claiming in accordance with honest practices (Dir. Art. 6 (1) exception) - in general not possible (for the national courts to decide). The trademark proprietor s possibility of claiming legitimate reasons (Dir. Art. 7 (2) exception) justifying to oppose the advertiser s use (for the national courts to decide). 8

9 TRADE MARKS ON THE INTERNET - ADWORDS (6) Conclusions - Adwords: The service provider: no trademark infringement, unless certain conditions are fulfilled The advertiser: is liable for trademark infringement if it is not clear to the average internet consumer whether the goods and services advertised originate from the trademark owner from or a third party Only limited possibilities of claiming the exceptions in Art. 6.1 and Art. 7.2 Surprising? Who is the average internet consumer and what about national laws on honest practices in industrial or commercial matters? 9

10 TRADE MARKS ON THE INTERNET ADWORDS (7) Google is changing it s adwords policy (September 2010): Trademark owners cannot anymore block their trademarks at Google, disabling third parties use of their trademarks as adwords (Special rules for UK and Ireland) 10

11 TRADE MARKS ON THE INTERNET - ADWORDS (8) In the pipeline : C-324/09 L Oréal e-bay C-232/09 Interflora vs. Marks & Spencer (Both cases are referred to the Court 12 August, 2009) 11

12 WELL-KNOWN TRADE MARKS Intel (C-252/07), decided 27 November, Death by a thousand cuts Teachings: 1. Whether there is a link (cf. Adidas C-408/01) between the earlier mark with a reputation and the later mark must be assessed globally taking into account all relevant factors, 2. Whether the use of the later mark of the later mark takes or would take unfair advantage of, or is or would be detrimental to the distinctive character or the repute of the earlier mark with a reputation must be assessed globally taking into account all relevant factors, 12

13 WELL-KNOWN TRADE MARKS (2) (Intel, teachings continued) 3. Proof that use would be detrimental to the distinctive character of the earlier mark with a reputation, requires evidence of a change in the economic behaviour of the average consumer, or a serious likelihood that such change will occur in the future. 13

14 WELL-KNOWN TRADE MARKS (3) L Oréal - Bellure (C-487/07), decided 18 June, 2009 Background: The dispute in the main proceedings related to a comparative advertisement using well-known trademarks of L Oréal. Teachings: It is considered the taking of unfair advantage (cf. Dir. Art. 5 (2)) if a third party who uses a sign similar to a trademark with a reputation without any effort of his own financial or otherwise attempts to ride on the coat-tails of the reputed mark in order to benefit from the power of attraction, reputation and prestige of the reputed mark 14

15 WELL-KNOWN TRADE MARKS (4) Pago (C-301/07) decided 6 October, 2009 Background: The decision relates to the meaning of the expression has a reputation in the Community as used in the Council regulation on the Community trademark regulation Art. 9(1)(c). It is previously decided, that territorially it is required that the trade mark in question has a reputation in a substantial part of the territory of the Community (cf. General Motors, C-375/97) 15

16 WELL-KNOWN TRADE MARKS (5) (Pago continued) Teachings: The territorial requirement of having a reputation in a substantial part of the territory of the Community may be fulfilled by a trade mark having a reputation in only one Member State, i.e. one Member State may be considered to tantamount a substantial part of the territory of the Community. 16

17 WELL-KNOWN TRADE MARKS (6) Conclusion Well-known trade marks? 17

18 GENUINE USE (1) Position in relation to genuine use: Ansul/Ajax C-40/01: genuine use requires real commercial use, i.e. by selling or offering for sale La Mer/Goeman C-259/02 and Vitafruit C-416/04: Global appreciation and no de minimis rule No requirement of substantial use in relation volume or geographical area Genuine use is a use complying with the basic function of the trademark, i.e. guarantee of origin to the consumers and create and uphold the sales potential for the branded goods 18

19 GENUINE USE (2) Verein/Radetzky-Orden (C-442/07), decided 9 December, 2008 Teachings: 1. It s not decisive whether the goods or services involved are offered on a non-profit-marketing basis. 2. Use of a trademark by a non-profit-marketing association during purely private ceremonies or events, or for the advertisement or announcement of such ceremonies or events does not constitute genuine use 3. It is genuine use where a non-profit-making association uses the trademark in its relation with the public 19

20 GENUINE USE (3) Silberquelle Maselli (C-495/07) Strickmode, decided on 15 January, 2009 Teachings: 1. It is not genuine use of a trademark if the trademark proprietor uses the trademark on items that is given away for free to purchasers of other goods of the trademark proprietor affixed a different trademark. It is uncertain if the result would have been different if the trademark proprietor had used the trademark on items, which were given away for free as an advertisement for such goods before starting the sale of the goods under that trademark. 20

21 GENUINE USE (4) Conclusion in relation to genuine use? 21

22 CONSENT (1) Current position in relation to the concept of consent: Sebago (C-173/98): Consent must relate to each individual item of the product in respect of which exhaustion is pleaded Davidoff (C-414, 415 and 416/99): Consent may be implied however, strict conditions apply 22

23 CONSENT (2) Dior-Copad (C-59/08) decided on 24 April, 2009 Exhaustion and consent in relation to trademarks with a reputation teachings: 1. No consent exists or is implied if licensee puts goods bearing the trademark on the market in disregard of a provision in a licence agreement, provided it is established that the provision violated is included in the provisions listed in Dir. Art. 8 (2) NB! - In relation to prestigious goods trademark proprietors should remember to include provisions in their licence agreements prohibiting the marketing of such goods in a way affecting the quality of the goods manufactured or the services provided by the licensee. 23

24 CONSENT (3) Coty Prestige Lancaster Group (C-127/09), decided 3 June, 2010 Background: Coty Prestige (manufactures and market perfumery goods such as: Lancaster, Joop!, Jul Sander, Calvin Klein, Lagefeld etc) handed out perfume testers to its authorised specialist dealers, no transfer of ownership, and with a prohibition on sale Teachings: In case of such for demonstration and not for sale products the trademark proprietor has not impliedly consented to putting the perfume products on the market 24

25 Conclusion in relation to consent? 25

26 BAD FAITH (1) Position in relation to bad faith: No previous case law with explanatory reasoning 26

27 BAD FAITH (2) Lindt & Spüngli (C-529/07), decided 11 June, 2009 Teachings: When determining whether an applicant is acting in bad faith, the national court must take into consideration 1. all relevant factors specific to the particular case pertaining at the time of filing the application, in particular 2. whether the applicant knew or must have known the trademark of the third party, 3. the applicant s intention to prevent that third party from continuing to use such sign, and 4. the degree of legal protection enjoyed by the third party s sign and by the sign for which the applicant seeks registration 27

28 Conclusion in relation to bad faith? --- ooo --- A trend in the decisions from the Court of Justice rendered ? Questions and remarks? THANK YOU 28

29 CONTACT Dorte Wahl, Partner Tel.: Mobil: