Good morning dear AIPPI members,

Transcription

1 ECJ case law on ornamental use AIPPI 2009 Buenos Aires Paul Reeskamp Allen & Overy LLP (Amsterdam) 12 October 2009 Good morning dear AIPPI members, The main issue I would like to address is whether under ECJ trademark law a trademark owner can oppose the ornamental use of his trademark. As it is always in law, the answer to this question depends on the very circumstances of the case. As we will see, the question is difficult to answer. The key circumstance seems to be whether the public believes that a certain sign is to be used as a trademark or not. Let's do a little survey first. Who believes the flower design to be a trademark? AMIP: October 2009

2 Again, who believes the design on the back pocket of this jeans to be a trademark? And who believes these stitchings are a trademark? Most of the times we seem easily to tell the difference between an ornament and a trademark. Under European trademark law the distinction between an ornament and a trademark of course is highly relevant. In rough terms, the trademark owner cannot oppose against the use of a sign if it is perceived to be a mere ornament AMIP: October 2009

3 ECJ 23 October 2003 Adidas v Fitnessworld This decision is one the many court decisions on the question whether Adidas can oppose the use of two stripe signs on sportswear. Sometimes Adidas looses, sometimes it wins. In this case one of the arguments of Fitnessworld was that there was no trademark infringement, since the public would believe that the two stripes were merely ornamental. As appears from the decision of the ECJ, this indeed can be a relevant defence. ECJ 23 October 2003 Adidas v Fitnessworld 39. The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of the Directive where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. 40. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark. That therefore means that the degree of similarity between the sign and the mark is not sufficient for such a link to be established. In short the ECJ ruled that: the fact that the public perceives a sign as embellishment or a decoration does not exclude the possibility that the public does see a link with the trademark; however, if the public merely perceives the sign as a decoration, there cannot be such a link; the question how the public perceives the sign, should be assessed by the national courts. This assessment is a factual one. The best way to assess this are consumer surveys. This is easy to say, but may be difficult to practise AMIP: October 2009

4 Article 5.2 EU Trademark Directive additional requirements: a. the trademark should have a reputation; b. detriment to the distinctiveness of the trademark; c. damaging the reputation of the trademark; d. taking unfair advantage of the repute of the trademark. The mere existence of such a link however is not sufficient for trademark infringement. According to article 5.2 EU Trademark Directive there are four additional requirements: (a) (b) (c) (d) the trademark should have a reputation; detriment to the distinctiveness of the trademark; damaging the reputation of the trademark; taking unfair advantage of the repute of the trademark. ECJ 27 November 2008 Intel v Intelmark 77 It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. How heavy is the burden of proof regarding the existence of one of these additional requirements? The ECJ answered this question in Intel v. Intelmark. In short, this case was about the question whether the famous trademark Intel could oppose the use of the trademark Intelmark for marketing services. In this decision the ECJ clearly held that: the mere fact that the trademark is unique and famous is not sufficient; the mere fact that the trademark comes into mind of the public is not decisive either AMIP: October 2009

5 The trademark owner should prove that there is a 'serious risk' that the distinctiveness of the trademark is damaged and that the economic behaviour of the consumer has changed as a consequence thereof. This is a very heavy burden of proof, if not impossible. For that reason various scholars have criticised the Intel-decision. It would be a virtual end to the anti-dilution protection. ECJ 12 December 2008 TDK 22 ( ) it must be noted that it is not necessary to demonstrate actual and present injury to an earlier mark; it is sufficient that evidence be produced enabling it to be concluded prima facie that there is a risk, which is not hypothetical, of unfair advantage or detriment in the future. Only 15 days following the Intel-decision, the ECJ with exactly the same judges - seemed to have softened the standard of proof required with respect to the existence of unfair advantage taken of the repute of the earlier mark. It is not necessary to prove actual and present injury to an earlier mark. It is sufficient to demonstrate that there is a risk, which is not hypothetical. This decision has been welcomed amongst commentators in Europe. The undue burden of proof of Intel has been lowered within two weeks. Summary Ornamental use can be opposed if: not merely ornamental the public sees a link prima facie evidence of a dilution/blurring/ free ride risk There is much more to say about the ornamental use of a trademark under ECJ case law. For example whether 'embellishment' trademarks can be registered and how to deal with freedom of speech issues AMIP: October 2009

6 The three decisions I have discussed (Adidas, Intel and TDK) however are the essence. The bottom line of these decisions is that the trademark owner can oppose the ornamental use of its trademark if: it is not merely ornamental if the public sees a 'link' between the trademark and the sign if there is prima facie evidence of taking unfair advantage of the repute of a trademark END PART I AMIP: October 2009