European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

The proprietor of a registered trade mark may prevent third parties from using in the course of trade  a sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered (Directive No 2015/2436, Article 10(2)(a)) . Both the mark and the identified products and services must be identical . A sign is identical with the …

Right to prevent the use of an identical sign for an identical good or service

The proprietor of a registered trade mark may prevent third parties from using in the course of trade  a sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered (Directive No 2015/2436, Article 10(2)(a)) . Both the mark and the identified products and services must be identical . A sign is identical with the trade mark within the meaning of Article 10(2)(a) of Directive No 2015/2436, where it 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 . Evidence of a likelihood of confusion is not required. The use of a trade mark, without the proprietor's authorization, in order to inform the public that the third party undertaking carries out repairs and maintenance of goods covered by that trade mark or that it is specialized in such goods, thus constitutes the use of a sign identical with the trade mark . Even if the sign is perceived, in the context of that use, as a badge of support or loyalty or affiliation to the trade mark proprietor, the latter may prevent that use .

The concept of “course of trade”, within the meaning of Article 10(2) of Directive No 2015/2436, excludes the private matter and means, according to case law, a commercial activity with a view to economic advantage . Article 10(3), using the examples set out in the non-exhaustive list in Article 5(3) of Directive 2008/95 of uses which are liable to be prohibited, adds two new examples established by the case-law of the EU: (a) affixing the sign to the goods or to the packaging thereof, (b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services thereunder, (c) importing or exporting the goods under the sign, (d) using the sign as a trade or company name or part of a trade or company name, (e) using the sign on business papers and in advertising , or (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.

The Court of Justice previously ruled that where an identical sign is used in unlawful comparative advertising in relation to goods or services which are identical, its use may be prohibited by the proprietor not because the essential function of the mark is jeopardized (indication of origin), but because one of its other functions is (guarantee of the quality of the goods or services, communication, investment, advertising) . By contrast, the proprietor cannot rely on his exclusive right where a third party, for example in the course of commercial negotiations, reveals the origin of the goods which he has produced himself and uses the mark in question solely to denote the particular characteristics of the goods he is offering for sale . Likewise, he cannot prevent the use, without his consent, of keywords corresponding to his trade mark in connection with an internet referencing service . In effect, the concept of use of a sign identical with (or similar to) the trade mark by a third party implies that such third party uses the sign as part of his own commercial communication. This is not the case for Google which, as an Internet referencing service provider that stores, as a keyword and on behalf of its customers, signs identical with trade marks, allows them to use signs which are identical with (or similar to) marks but does not itself use those signs. In such a case, the proprietor of the trade mark may only bring proceedings against the third party advertiser whose ads from a keyword identical to the mark suggest that there is an economical link with the proprietor . Furthermore, the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of “due cause”  to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith .

Lastly, where the proprietor of a trade mark, in a situation where there has been use shared with a third party, had consented to the use by that third party of signs which are identical to its marks in respect of certain goods in classes for which those marks are registered and who no longer consents to that use, the Court of Justice finds that, pursuant to Article 10, the proprietor may not be deprived of any possibility of asserting the exclusive right conferred upon it by those marks against that third party and of himself exercising that exclusive right in respect of goods which are identical to those of that third party .

Case C-206/01 Arsenal Football Club plc v Reed [2002] ECR I-10273, LawLex200900001111JBJ, which holds that the use of a sign which is identical to a validly registered trade mark is indeed use in the course of trade within the meaning of Article 5(1) of Directive No 2008/95, where it takes place in the context of commercial activity with a view to economic advantage and not as a private matter; Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH [2010], LawLex201100000459JBJ, holding that a sign chosen by an advertiser as a keyword in an Internet referencing service, is use 'in the course of trade' within the meaning of Article 5(1) of Directive No 2008/95 where it is the means used to trigger the ad display of the advertiser.

Re-using in substance the formulation of reprenant en substance l'art. 5, paragr. 1, a) de la Dir. 2008-95.

Case C-236/08 Google France and Google [2010] ECR I-2417, LawLex201100000505JBJ. See along the same lines: Case C-91/09, Eis.de [2010] ECR I-43 Summ. pub.

Case C-236/08 Google France and Google, LawLex201100000505JBJ. See along the same lines: Case C-91/09, Eis.de [2010] not yet published in the ECR.

Case C-65/12 Leidseplein Beheer BV, Judgment of 6 February 2014, LawLex201400000192JBJ, which stipulates that in  order to determine usage in  good faith the national court must take account, in particular, of how that sign has been accepted by, and what its reputation is with, the relevant public, the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered and the economic and commercial significance of the use for that product of the sign which is similar to that mark.

Case C-661/11 Martin Y Paz Diffusion SA, Judgment of 19 September 2013, LawLex201300001336JBJ.

Whereas, similarity is required only for one or the others.

Case C-291/00 LTJ Diffusion [2003] ECR I-2799, LawLex200900001413JBJ.

Case C-63/97 BMW [1999] ECR I-905, LawLex200700001824JBJ.

Case C-206/01 Arsenal Football Club [2002] ECR I-10273, LawLex200900001111JBJ.

Using the same terms as Article 5(1) of Directive No  2008/95.

Case C-487/07 L'Oréal and others [2009] ECR I-5185, LawLex201100000386JBJ. See also Case C-236/08 Google France and Google, LawLex201100000505JBJ, which considers that the use by advertisers on the Internet of a keyword identical with the market of someone else for purposes of displaying an advertising does not per se jeopardize the advertising function of the trade mark where the website of the trade mark appears usually and free of charge in the highest position on the list of the natural results when entering the keyword.

Case C-2/00 Hölterhoff [2002] ECR I-4187, LawLex200900001069JBJ.

European Business Law

241. Right to prevent the use of an identical sign for an identical good or service

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241. Right to prevent the use of an identical sign for an identical good or service

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise