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

Directive No 2008/95 gave an option to Member States allowing them to extend the exclusive right of the trade mark proprietor in the event of use by a third party of any sign which is identical with, or comparable to, the trade mark for goods or services which are not comparable to those for which the mark is registered (Directive No 2008/95, Article 5(2)) . Directive No 2015/2436 contains similar …

Right to prevent the use of a sign for goods or services which are not comparable

Directive No 2008/95 gave an option to Member States allowing them to extend the exclusive right of the trade mark proprietor in the event of use by a third party of any sign which is identical with, or comparable to, the trade mark for goods or services which are not comparable to those for which the mark is registered (Directive No 2008/95, Article 5(2)) . Directive No 2015/2436 contains similar provisions in Article 10(2)(c), but removes the reference to comparability. Now, the proprietor of the registered trade mark is entitled to prevent all third parties from using any sign which is “identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trade mark is registered”. Several cumulative conditions must however be met: the protected mark must have a reputation in the Member State, the sign at issue must be used without due cause and use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. The Member State who exercises that option must further give protection that is at least as extensive for identical or similar goods or services as for non-similar goods or services .

A trade mark has a reputation  in the Member State where it exists in a substantial part of that Member State  or it is known by a significant part of the public concerned by the products or services covered by that trade mark, either the public at large or a more specialized public, i.e. traders in a specific sector, and having regard, inter alia, to the market share held by the trade mark, the intensity and duration of its use, and the size of the investments made by the undertaking in promoting it . A likelihood of confusion between the well-known trade mark and the sign is not necessary. A degree of similarity that induces the relevant public to establish a link between the sign and the mark is sufficient . An earlier Community trade mark, which has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, may benefit from the protection introduced by the directive where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is either actual and present injury to the Community trade mark, or a serious risk that such injury may occur in the future .

The concept of “taking unfair advantage of the distinctive character or the repute of the trade mark”, also referred to as “parasitism” and “free-riding”, is not assessed with respect to the detriment caused to the mark but with respect to the advantage taken by the third party as a result of the use of the identical sign or similar sign. It covers, inter alia, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects on the goods identified by the identical or similar sign, the third party exploits the proprietor's commercial effort by placing himself in the coat-tails of the mark with a reputation. This is the case where a third party uses a sign similar to a mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige, without paying any financial compensation and without being required to make the marketing efforts expended by the proprietor of that mark in order to create and maintain that image .

Detriment to the distinctive character of the mark is also referred to as “dilution”, “whittling away”, “blurring”, “tarnishment” or “degradation”. It is sufficient, in order to bring evidence of the detriment to the distinctive character, to establish a change in the economic behavior of the consumer as a result of that use, or a serious likelihood that such a change will occur in the future . This is the case where 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 , where that mark's ability to identify the goods or services for which it is registered is weakened  or where the earlier mark loses its capacity to arouse immediate association with the goods or services, even if the proprietor of the later mark does not derive any actual commercial benefit .

E.g. the affixing by a third party, without the authorization of the proprietor of a motor vehicle trade mark, of a sign identical to that mark to scale models of that make of vehicle, see, Case C-48/05 Adam Opel [2007] ECR I-1017, LawLex200900000954JBJ.

Case C-292/00 Davidoff [2003] ECR I-389, LawLex200900001414JBJ.

Case C-487/07 L'Oréal and others [2009] ECR I-5185, LawLex201100000386JBJ, specifying that use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public's mind.

Case C-252/07 Intel Corporation [2008] ECR I-8823, LawLex200900000976JBJ.

The criteria laid down in the case law concerning genuine use of a Community trade mark are not relevant as such for the purpose of establishing a reputation within the meaning of Article 10(3)(a) of Directive No 2015-2436, see Case C-125/14 Iron & Smith kft v Unilever NV, Judgment of 3 September 2015, LawLex201500001036JBJ.

See Case C-375/97 General Motors [1999] ECR I-5421, LawLex200700001904JBJ, which assimilates Benelux to the territory of a Member State as regards trade marks registered with the Benelux Trade Mark Office.

Case C-375/97 General Motors [1999] ECR I-5421, LawLex200700001904JBJ.

See regarding a dispute between Adidas and Fitnessworld, the latter selling fitness clothing bearing a motif of two parallel stripes of equal width applied of the side seams of the clothing, Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, LawLex200900000724JBJ, considering that the conditions of protection granted by Article 5(2) of Directive No 2008/95 are not fulfilled where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment and therefore does not establish any link with a registered mark. 

Case C-125/14 Iron & Smith kft v Unilever, Judgment of 3 September 2015, LawLex201500001036JBJ.

See regarding operators who uses packaging and bottles similar to certain marks with a reputation registered by L'Oréal in order to market perfumes which constitute downmarket imitations of its luxury fragrances: Case C-487/07 L'Oréal and others [2009] ECR I-5185, LawLex201100000386JBJ.

Case C-252/07 Intel Corporation [2008] ECR I-8823, LawLex200900000976JBJ, which specifies, inter alia, that a first use of an identical or similar mark may suffice to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future.

Case C-487/07 L'Oréal and others [2009] ECR I-5185, LawLex201100000386JBJ, for goods or services offered by a third party and which possess a characteristic or a quality which is liable to have a negative impact on the image of the trade mark.

European Business Law

243. Right to prevent the use of a sign for goods or services which are not comparable

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243. Right to prevent the use of a sign for goods or services which are not comparable

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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