The European Court of Justice (ECJ) had to decide in a case where the defendant (Bellure) was marketing imitations of the claimant’s (L’Oréal) fragrances whereby packaging and bottles were being generally similar however this similarity was unlikely to mislead professionals or the public. Further on the defendant was marketing these imitations by using L’Oréal´s wordmarks in a comparison price list.
One of the key questions the court answered (in the negative), was whether the applicability of Directive 89/104/EEC (to approximate the laws of the Member States relating to trade marks) and of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) requires a likelihood of confusion.
The taking of unfair advantage of the distinctive character or the repute of a mark pursuant to Article 5(2) of Directive 89/104/EEC does not require a likelihood of confusion or detriment to the distinctive character or the repute of the mark.
The unfairness of the use of a trademark arises where a third party seeks
- to ride on the coat-tails of the mark with a reputation and
- to benefit from the reputation of that mark
and thus is exploiting the proprietor’s marketing efforts without paying any financial compensation.
Under Article 5(1)(a) of Directive 89/104/EEC the proprietor of a registered trade mark has the right to ban a third party from using that trademark in a comparative advertisement not compliant with the requirements as per Article 3a(1) of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) even if such use does not jeopardise the essential function of the mark (indicating the origin of the goods or services) if it affects one of the other functions of the mark and by that going beyond a mere descriptive use. These complimentary functions are in particular:
The court sees the way in which L’Oréal’s wordmarks were being used by the defendant in the price lists as more than a mere descriptive comparison. In fact the price lists in this case are classified by the court as a means of advertising.
An advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark unlawfully presents “goods or services as imitations or replicas” within the meaning of Article 3a(1)(h) of Directive 84/450 (amended by Directive 97/55) and advantages gained as a result of such unlawful comparative advertising are thus taken unfairly of the reputation of that mark pursuant to Article 3a(1)(g) of Directive 84/450.
It has to be noted that on the 27. November 2008, Directive 89/104/EEC has been replaced by Directive 2008/95/EC. However regarding the date of the case’s facts in the main proceedings, this case still had to be decided applying Directive 89/104/EEC.
European Court of Justice (C-487/07 – 18. June 2009)
June 22, 2009 No Comments
There is no similarity or likelihood of confusion between the trademark “ck creationes kennya” and the older community trademark “ck calvin klein”.
Pursuant to Art. 8 Para. 1 lit. b Council Regulation(EC) No. 40/94 a trademark can not be registered if
- the proprietor of an older trademark objects and
- the new mark is identical or similar to the older trademark and
- the trademarks are related to identical or similar goods or services and
- this causes a likelihood of confusion within the relevant public circles.
When comparing compound trademarks, it is not sufficient to compare components separately. In fact it is required to compare the trademarks in their entireness.
The mere similarity between the dominating element “ck” of the older trademark “ck calvin klein” (being registered in a way where “ck” is printed in significantly bigger fonts than “calvin klein”) and the element “ck” of “ck creaciones kennya” does not cause a likelihood of confusion as the latter is dominated by “creaciones kennya” and not by “ck”.
European Court of First Instance (T-185/07, 7th May 2009)
June 15, 2009 No Comments
The following article briefly outlines how a trademark infringement is determined under German law pursuant to Sec. 14 Trademark Act.
A protected sign has been used by a third party without consent in the course of trade.
The infringement may happen in one of the following three ways:
Infringement of identity. The used sign is identical to the protected sign and it is being used for goods/ services in identical categories. These are typically cases of “Product Piracy”.
Likelihood of confusion. A similar sign is infringing a protected sign if there is a likelihood of confusion. The likelihood of confusion is determined by three aspects:
- Similarity of signs
- Similarity of related goods/ services
- Distinctiveness of protected sign.
Last but not least exploitation of a popular sign. This is the case where a similar sign is taking unfair advantage of a protected sign’s reputation or damaging this signs reputation. A sign is deemed as popular if it is renowned amongst 20 – 30% of the relevant circles in Germany.
May 26, 2009 No Comments
A bit of a golden oldie, but certainly worth another look again, especially in the face of the more recent developments in terms of using trademarked keywords in paid search results (Google AdWords), already discussed here and here.
In its so called “Impuls III” – decision (18. May 2006 – I ZR 183/03) the German Federal Court of Justice has decided, that the unauthorised use of third party signs in the source code of a website is relevant as infringement under the German Trademark Act, even if these signs are imperceptible (to the human eye).
This is no different in cases where such signs are being incorporated in the actual text of a website (be it in very small fonts or font colours matching the background colour). The principle of Exhaustion (Sec. 24 Trademark Act) does only allow such use, if the specific original product is being promoted. German Federal Court of Justice, “AIDOL” – decision, (8. Feb. 2007 – I ZR 77/04). A similar line-up of font matching is discussed here by Martin Schwimmer in his very comprehensive Trademark Blog (US law).
Based on this, the recent development as to how the Federal Court of Justice is judging third party keywords in paid for search results, appears a bit surprising at first sight. It seems that in the opinion of the court one of the key differentiators between meta tagging cases and AdWords cases is the “likelihood of confusion”, which isn’t seen as an issue in paid for search results as long as they are distinct from organic results. Hence, the court stresses segregation of paid for search results from organic search results and labelling paid for search results as advertisement (see here and here again).
May 18, 2009 No Comments
The use of company symbols as keywords in the paid search of Internet search engines (here: Google AdWords) not necessarily implicates a likelihood of confusion with the protected symbol if the advertisement displayed in the section for paid search results does not actually use the protected symbol.
(Federal Court of Justice, I ZR 30/07, 22 Jan 2009)
Company symbols are protected as commercial designations under German trademark legislation, Sec. 1 (2) and Sec. 5 (1) German Trademark Act (MarkenG). In Sec. 5 (2) company symbols are characterised as signs that are used in the course of business as name (of a firm) or special designation of a business.
Unlike a trademark, a company symbol is directly linked to a company and only indirectly related to a specific product or service.
May 3, 2009 1 Comment