IP Law and Management CEIPI Strasbourg February 17

IP Law and Management, CEIPI Strasbourg, February 17, 2014 Trademark Law RA Prof. Dr. Martin Senftleben Bird & Bird, The Hague VU University Amsterdam

Overview of the IP system culture copyright law commerce trademark law technology patent law 2

Legislation

International (substantive law) WIPO: Paris Convention for the Protection of Industrial Property (PC, 1883/1967) WTO: Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, 1994) 4

International (procedural law) WIPO: Madrid System Madrid Agreement Concerning the International Registration of Marks (1891/1967) Protocol Relating to the Madrid Agreement (1989) WIPO: TLT System Trademark Law Treaty (1994) Singapore Treaty on the Law of Trademarks (2006) WIPO: Nice Agreement (1957/1979) 5

European Union • Trademark Directive 89/104/EEC (1988) = Directive 2008/95/EC (2008) • Community Trade Mark Regulation (CTMR) 40/94 (1993) = 207/2009 (2009) 6

Definition and function

Distinctive signs ‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. ’ (art. 15(1) TRIPS Agreement) 8

Function (macro): market transparency ensuring honest commercial practices consumer protection contribution to a functioning market producer competitor consumer 9

Function (micro): business strategy origin function identification of enterprises as the commercial source of goods or services quality function – expectations of consumers – encouragement to maintain the attained quality standard communication function – additional information: lifestyle, attitudes – trademark image 10

Function (micro): business strategy exclusive link with a sign marketing quality control creation of a brand image product identification consumer communication passive TM defense active TM exploitation limited to specific sectors TM becomes a product 11

Strategic approach

Intelligent legal services type of trademark appropriate marketing tool for your target markets? appropriate basis for strong legal protection? availability of the trademark prior rights structure differs from country to country trademark clearance avoids conflicts description of goods and services different approaches, for instance, in EU and US requirement of use 13

Intelligent legal services portfolio management registration and administration costs languages, dates, trademark monitoring establishment of a trademark holding? tax efficiency brand exploitation investment in marketing enhanced protection of resulting reputation trademark rights become exploitation rights selling and licensing of a favorable brand image 14

Cost effectiveness generating extra income = business asset less costly trademark portfolio 15

Successful brand management to the creation of exploitable brand value from the costly defense of trademark rights 16

Step 1: marketing decisions

Checklist Which signs are desirable from a marketing perspective? Which scope of protection is desirable from a legal perspective? How to strike a proper balance between these (potentially competing) goals? 18

Kinds of marks

Art. 2 Trademark Directive (TMD) ‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. ’ 20

Overview of signs Visible signs Non-visible signs words, letters, numerals drawings, colors, pictures 3 D hologram motion position sound (audio) smell (olfactory) capable of being represented graphically? 21

Words, letters, numerals “American Express”, “Boss”, “Holiday Inn”, “Microsoft”, “Pizza Hut”, “Puma” “Mars”, “Mc. Donald’s”, “Mercedes Benz”, “Ralph Lauren”, “Jil Sander” “Adidas”, “Kit Kat”, “Kodak”, “Reebok” “BMW”, “CNN”, “IBM”, “M&M”, “YSL” “A 6”, “ 501”, “No. 5”, “S 500”, “ 4711” 22

Drawings, pictures, colors 23

3 D Shapes 24

Audio marks, smell marks the roar of a lion? an engine noise? the tune of a mobile phone? the smell of freshcut green grass? 25

Excluded signs

CJEU, January 25, 2007, case C-321/03, Dyson/Registrar of Trade Marks ‘[t]he mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation. ’ (para. 10) 27

CJEU, January 25, 2007, case C-321/03, Dyson/Registrar of Trade Marks ‘…the holder of a trade mark relating to such a nonspecific subject-matter would obtain an unfair competitive advantage […], since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape. ’ (para. 38) subject matter = mere product property no ‘sign’ in the sense of the Directive 28

Excluded signs (art. 3(1)(e) TMD) ‘The following shall not be registered or if registered shall be liable to be declared invalid: […] signs which consist exclusively of: the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods. ’ 29

CJEU, June 18 2002, case C-299/99, Philips/Remington 30

CJEU, June 18 2002, case C-299/99, Philips/Remington ‘… to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. ’ (para. 78) no monopolisation of decisive product features safeguarding freedom of competition 31

CJEU, June 18 2002, case C-299/99, Philips/Remington ‘In refusing registration of such signs, Article 3(1)(e), second indent, of the Directive reflects the legitimate aim of not allowing individuals to use registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions. ’ (para. 82) no artifical extension of the term of patent protection 32

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands) Philips/Remington confirmed in particular: shape alternatives not decisive 33

Rationale? culture copyright law commerce trademark law technology patent law 34

General Court, 6 October 2011, case T-508/08, Bang & Olufson 35

General Court, 6 October 2011, case T-508/08, Bang & Olufson need to prevent monopoly also in the case of substantial value shapes ‘Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes. ’ (para. 66) 36

General Court, 6 October 2011, case T-508/08, Bang & Olufson this need arises in particular in the case of specific design ‘Indeed, the shape for which registration was sought reveals a very specific design and the applicant itself admits [. . . ] that design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value. ’ (para. 74) 37

General Court, 6 October 2011, case T-508/08, Bang & Olufson this need arises in particular in the case of specific design ‘Furthermore, it is apparent [. . . ] that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point. ’ (para. 75) 38

But still room for trademark rights with regard to other types of cultural material copyright protection limited in time term extension via trademark law? accumulation of rights possible in many cases 39

Protection requirements

Art. 2 TMD ‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. ’ 41

Core requirements procedural: graphical representation (register transparancy) substantial: distinctive character (market transparancy) 42

Graphical representation

CJEU, 27 December 2002, case C-273/00, Sieckmann at issue: registration of a smell mark (cinnamic acid methyl ester) ‘. . . that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. ’ 44

CJEU, 27 December 2002, case C-273/00, Sieckmann in case of an olfactory sign (-) ‘In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements. ’ 45

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist notation: ‘On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals. ’ 46

Distinctiveness

Distinctiveness trademark = means of distinction distinctiveness = basic requirement to be determined with regard to specific goods or services (principle of speciality) ‘Ajax’ for a soccer team ‘Ajax’ for a cleaning detergent depends on social and cultural context case-by-case analysis 48

Distinctive signs? indication of product features fanciful signs ‘persil’ for a cleaning detergent ‘makes clean’ for a cleaning detergent signs adopted arbitrarily with regard to the goods or services use of generic terms ‘apple’ for apples ‘camel’ for camels ‘apple’ for computers ‘camel’ for cigarettes . . . (-). . . (+) 49

No constant level of distinctiveness may exist from the very beginning (arbitrarilychosen, strong trademark) can be acquired or become stronger through use (secondary meaning) but may also decrease (dilution) may even be lost (trademark becoming a generic term) 50

Overview of influence factors (-) (+) (-) genericism secondary meaning dilution 51

Need to keep free

Descriptive signs (art. 3(1)(c) TMD) Marks consisting exclusively of signs indicating the. . . other characteristics of goods/services kind, quality, quantity value, intended purpose geographical origin 53

Public interest CJEU, 12 February 2004, case C-265/00, Biomild ‘. . . that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods. ’ 54

CJEU, 12 February 2004, case C-265/00, Biomild A combination of descriptive elements is itself descriptive, unless ‘. . . there is a perceptible difference between the neologism and the mere sum of its parts. ’ decisive: different impression 55

Step 2: management decisions

Checklist For which goods and services should the trademark be protected? In which markets should the trademark enjoy protection? How to obtain and uphold the required protection for relevant goods and services in these markets? 57

Registration

Basic principles registration must always be made in respect of specific goods and services (principle of speciality) ‘Ajax’ for a soccer team ‘Ajax’ for a cleaning detergent first application prevails over subsequent applications exception: application in bad faith first application may be an application in another Member State of the Paris Union (Union priority) 59

Paris Union 60

Right of priority (art. 4 Paris Convention) filing in other Union countries filing in one country of the Paris Union 6 months 61

Term of protection 10 years, as of application (filing date) indefinitely renewable for further terms of 10 years patents, industrial designs trademarks 62

Community Trade Mark

CTM Registration publication application examination opposition relative conditions grounds of filing absolute grounds 64 refusal registration

Absolute grounds for refusal (art. 7(1)(e) CTMR) ‘. . . signs which consist exclusively of: the shape which results from the nature of the goods themselves; or the shape of goods which is necessary to obtain a technical result; or the shape which gives substantial value to the goods. ’ 65

Absolute grounds for refusal (art. 7 CTMR) trademarks which are devoid of any distinctive character trademarks which consist exclusively of signs or indications which have become costumary in the current language or in the bona fide and established practices of trade (= generic) 66

Absolute grounds for refusal (art. 7 CTMR) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or service (= descriptive) trademarks contrary to public policy or to accepted principles of morality trademarks which are of such a nature as to deceive the public 67

Examples deceptive signs “Orwooola” for goods made 100% of synthetic material signs contrary to morality or public order “Jesus” for jeans “Cannabia” for foodstuff 68

Absolute grounds for refusal (art. 7 CTMR) trademarks which have not been authorized by the competent authorities (art. 6 ter Paris Convention) trademarks which include badges, emblems or escutcheons of particular public interest 69

Registration acquisition of trademark rights term of protection: 10 years indefinitely renewable Still possible: application to the Office/ counterclaim in infringement proceedings: revocation (effect ex nunc, Art. 51 CTMR); invalidation (effect ex tunc, Arts. 52, 53 CTMR) 70

Requirement of genuine use (art. 51(1)(a) CTMR) Revocation possible ‘if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. . . ’ 71

CJEU, 11 March 2003, case C-40/01, Ajax/Ansul: holder of ‘Minimax’ for fire extinguishers sales authorisation expired in 1988 still uses the trademark for component parts, extinguishing substances and repair services Ajax: registered ‘Minimax’ for fire protection materials and related items in 1992 starts using the mark in 1994 invokes genuine use defense against Ansul 72

CJEU, 11 March 2003, case C-40/01, Ajax/Ansul ‘…in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. ’ ‘…whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark…’ 73

CJEU, 11 March 2003, case C-40/01, Ajax/Ansul ‘…for goods that were sold in the past does not mean that its use is not genuine, if the proprietor makes actual use of the same mark for component parts that are integral to the make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods. ’ 74

Registration strategies

The problem national route solution 1: in many languages harmonisation of national procedures fees in many currencies solution 2: file in many Offices numerous national agents bundle of registrations via central procedure results in many national registrations requires many renewals solution 3: changes to be recorded via each national Office transnational trademark law system 76

Routes to registration OHIM: Community Trade Mark national covers entire EU territory Madrid System: international registration 77

Streamlining via the EU system? Switzerland ‘uncontrolled’ accumulation of registrations 78

EU route: Community trademark (CTM) filing in an official EU language indication of a second language for opposition, revocation or invalidity procedures (art. 119 CTMR: EN, FR, DE, IT, ES) seniority claims (art. 34 CTMR) conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR) 79

Claiming seniority 1. 1. 2007 A registers the mark Y. 1. 1. 2008 B registers the conflicting mark YY. 80 1. 1. 2009 A registers Y as a CTM claiming the seniority of the earlier identical mark in respect of Germany.

Conversion filing date of CTM application maintained (including potential priority date) seniority guaranteed designated EU Member States can ask: payment of national fees translation into an official language of the State concerned address in the State concerned reproduction of the trademark 81

Streamlining via international route? Switzerland ‘uncontrolled’ accumulation of registrations 82

International route: Madrid System basic principle: extension of protection in one Member of the Madrid Union to other Members one international registration leading to a bundle of trademark rights in designated Members central recording of changes (name, address, new holder) central renewal (online) subsequent designations (new markets) language regime: EN, FR, ES 83

Madrid Union 84

Overview of the System Madrid Agreement (A) Madrid Agreement of April 14, 1891 Madrid Protocol (P) Madrid Protocol of June 27, 1989 common regulations administrative instructions national law (Madrid interface) 85

Resulting procedure national basis: registration (A/P), application (P) l tiona na Inter cation li App OFFICE OF ORIGIN INTERNATIONAL BUREAU OFFICE OF DESIGNATED CONTRACTING PARTY Certifies particulars in international application = particulars in basic application or basic registration Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties substantial examination within 12/18/18+ months no refusal = effect of refusal a national registration 86

Switzerland as a basis P P United States AP P European Community Switzerland AP AP China 87

EU as a basis P AP Egypt P P P AP Switzerland European Union P AP China 88

Stages of extension first step: further steps: designation of Madrid Members in the initial application subsequent designations (further markets) 89

Advantages one international registration effect of a bundle of national registrations efficient management changes (name, address, ownership) renewal flexibility subsequent designations limitation, renunciation, cancellation = cost savings 90

Step 3: monitoring and exploitation

Checklist How to monitor the trademark register and the market in relevant countries? How to decide on whether or not to take action against competing signs? What is the scope of trademark rights? 92

Trademark rights

Exclusive right: art. 5(1) TMD ‘. . . The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: [. . . ]’ 94

Exclusive right: art. 5(3) TMD Use in the course of trade: offering goods or services under the mark affixing the mark to the goods or their packaging putting goods on the market stocking goods for that purpose importing or exporting goods under the mark use on business papers or in advertising 95

Layers of trademark protection a. identity b. similarity c. similarity+ …between the mark and the sign? …between the goods and services? 96

Identity: absolute protection

Identity identical signs identical goods or services adverse effect on one of the functions of the trademark “Lacoste” for shirts “Swatch” for watches “Toyota” for cars 98

Protected trademark functions CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure: ‘These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising. ’ (para. 58) 99

Confusion: similarity

101

102

Similarity identical or similar signs identical or similar goods or services required: likelihood of confusion as to the origin of goods or services “Lowcost” for shirts “Swotch” for watches “Toy-yoh-tah” for cars “Lacoste” for trousers “Swatch” for thermometers “Toyota” for bicycles 103

Similarity between sign and trademark comparison of: trademark as registered and sign as used in trade no direct comparison, focus on what consumers can remember The overall impression is decisive, not the details of the sign and the trademark. 104

Similarity between sign and trademark aural differences can compensate Claeryn/Klarein similar features: visual Obelix/Mobilix Bally/Baileys conceptual Mars/Venus 105

Similarity between goods or services = when the public perceives the goods or services as related to each other CJEU: The assessment must take account of all relevant factors defining the relation between the goods and services. kind, purpose, use competing or complementary character (case C-39/97, Canon/Cannon) 106

Influence of the degree of distinctiveness distinctive character as a basis for identification the more distinctive the earlier mark, the greater the likelihood of confusion (CJEU, case C-251/95, Puma/Sabel, para. 24) the more distinctive the earlier mark, the broader the field of similar goods/services (CJEU, case C-39/97, Canon/Cannon, para. 19) 107

CJEU, 11 November 1997, case C-251/95 Sabel: application in Germany Puma: opposition 108

CJEU, 11 November 1997, case C-251/95, Puma/Sabel ‘(1) where the public confuses the sign and the mark in question (likelihood of direct confusion); ’ ‘(2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association); ’ 109

CJEU, 11 November 1997, case C-251/95, Puma/Sabel ‘(3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense). ’ 110

Overview risk of confusion indirect risk of confusion/association risk of association 111

CJEU, 11 November 1997, case C-251/95, Puma/Sabel Risk of association in the strict sense (without risk of confusion) is insufficient. Risk of confusion in any case required. Two types: direct confusion: the public confuses the products concerned indirect confusion: the public thinks that the products stem from the same or from associated enterprises 112

Similarity+: protection of wellknown marks

Layers of trademark protection exclusive link with a sign marketing quality control creation of a brand image product identification consumer communication distinctive character reputation, repute protection against confusion protection against dilution 114

Similarity+ similarity with a trademark having a reputation identical, similar and dissimilar goods or services ‘…where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. ’ 115

Dissimilar goods and services exception to the principle of speciality in case of well-known trademarks 116

The standard of having a reputation (CJEU, Case C-375/97, ‘Chevy’) ‘The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector. ’ (para. 24) 117

The standard of having a reputation (CJEU, Case C-375/97, ‘Chevy’) ‘The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. ’ (para. 26) 118

The standard of having a reputation (CJEU, Case C-375/97, ‘Chevy’) ‘In the absence of any definition [in art. 5(2) of Directive 89/104 EEC] in this respect, a trade mark cannot be required to have a reputation ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of [the Member State]. ’ (para. 28) …niche reputation (+) 119

Which kind of link between sign and mark? risk of confusion indirect risk of confusion/association risk of association 120

CJEU, 23 October 2003, case C-408/01, Adidas/Fitnessworld Trading ‘It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark. ’ likelihood of association in the strict sense sufficient 121

Overview infringement: CJEU distinguishes three situations damage to the well-known mark: 1) detriment to distinctive character 2) detriment to repute advantage which the alleged infringer derives from the use of a similar sign: 3) unfair advantage of distinctive character or repute 122

Detriment to distinctive character ‘. . . when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so. ’ CJEU, case C-487/07, L’Oréal/Bellure, para. 39 123

Detriment to distinctive character (+) dilution …for pianos, suits, perfume, books, software 124

Detriment to repute ‘. . . when 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. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark. ’ CJEU, case C-487/07, L’Oréal/Bellure, para. 40 125

Detriment to repute …for fast food, a cleaning detergent, an Amsterdam night club 126

Unfair advantage of distinctive character or repute ‘. . . relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coattails of the mark with a reputation. ’ CJEU, case C-487/07, L’Oréal/Bellure, para. 41 127

CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure L’Oréal: produces luxury perfumes is the owner of several word marks (Trésor, Miracle, Noa etc. ) Bellure: produces cheap imitations of L’Oréal-perfumes uses L’Oréal-word marks in comparison lists 128

CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure 129

CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure ‘. . . where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark. ’ (para. 49) = unfair free riding 130

'Due cause' defence Marks & Spencer selects the trademark ‘Interflora’ and variants as internet search terms sponsored search result: ‘M & S Flowers Online www. marksandspencer. com/flowers Gorgeous fresh flowers & plants Order by 5 pm for next day delivery’ 131

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer purpose of selecting a trademark with a reputation is to take advantage of that mark’s distintive character and repute ‘In fact, that selection is liable to create a situation in which the probably large number of consumers using that keyword to carry out an internet search for goods or services covered by the trade mark with a reputation will see that competitor’s advertisement displayed on their screens. ’ (para. 86) 132

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer use of a mark with a reputation in keyword advertising implies the taking of an unfair advantage (free riding) ‘. . . that such a selection can, in the absence of any ‘due cause’ [. . . ], be construed as a use whereby the advertiser rides on the coat-tails of a trade mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige, . . . ’ (para. 89) any ‘due cause’ defence available? 133

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer ‘By contrast, where the advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark concerned – an alternative to the goods or services of the proprietor of the trade mark with a reputation, . . . ’ 134

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer ‘. . . it must be concluded that such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned and is thus not without ‘due cause’. ’ (para. 91) new type of ‘due cause’ defence for informing consumers about alternatives considerable breathing space for commercial freedom of speech? whole bundle of conditions to be fulfilled! 135

Without due cause? …written ‘E$$O’ 136

Without due cause? 137

Limitations

Starting point: use that, in principle, would amount to infringement limitation? exhaustion? art. 6 TMD art. 7 TMD . . . , provided honest practices in no legitimate reason of industrial or commercial the owner to oppose matters further sale 139

Overview art. 6 TMD use own name or address indications concerning the characteristics of goods or services (descriptive use) necessary to indicate the intended purpose of a product or service, in particular as accessories or spare part (use that refers to a trademark) earlier right which only applies in a particular locality (within the limits of the relevant territory) 140

Exhaustion

Partitioning of markets Netherlands: 100 EUR Italy: 90 EUR Greece: 75 EUR trademark rights as a weapon against parallel imports? (+) in case of national exhaustion (-) in case of international exhaustion 142

Art. 7(1) TMD ‘The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. ’ EU-wide exhaustion (‘communautaire’) 143

Art. 7(2) TMD ‘…shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. ’ re-packaging (CJEU, July 11, 1996, case C-427/93, BMS/Paranova) inappropriate advertising (CJEU, November 4, 1997, case C-337/95, Dior/Evora) 144

CJEU, July 11, 1996, case C-427/93, BMS/Paranova To prevent artifical market partitioning, re-packaging is permitted, provided that the original state of the product is not impaired; the presentation of re-packaged products is not detrimental to the repute of the mark; the trademark owner is informed beforehand. 145

CJEU, November 4, 1997, case C-337/95, Dior/Evora advertising is indispensable: reseller is permitted to advertise loyalty obligation: reseller must seek to prevent that the advertising is detrimental to the value of the trademark permitted: the advertising that is usual with regard to comparable products in the relevant sector exception: the brand image is damaged seriously 146

Comparative advertising

CJEU, June 12, 2008, case C-533/06, O 2/Hutchison • O 2: – registered bubbles as a trademark • Hutchison: – shows in advertising for telecom services black-and-white pictures of moving bubbles – compares the price of her services with those of O 2 148

CJEU, June 12, 2008, case C-533/06, O 2/Hutchison ‘. . . must be interpreted to the effect that the proprietor of a registered trade mark is not entitled to prevent the use, by a third party, of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions, laid down in Article 3 a(1) of Directive 84/450, under which comparative advertising is permitted. ’ (para. 45) 149

Keyword advertising 150

Keyword advertising trademark owner: obliged to invest in sponsored links? competitor: unfair free-riding with sponsored links? search engine: profiting from trademark reputation? trademark owner competitor search engine 151

CJEU, 23 March 2010, case C-236/08, Google/Louis Vuitton: owns the reputable trademarks ‘Louis Vuitton’, ‘Vuitton’ and ‘LV’ Google permits use of these marks as Ad. Words for websites offering counterfeit Louis Vuitton products Ad. Words service allows combination of the marks with search terms indicating counterfeit products, such as ‘imitation’, ‘reproduction’ and ‘copy’ 152

CJEU, 23 March 2010, case C-236/08, Google/Louis Vuitton search engine advertiser use of the trademark (-) use of the trademark (+) safe harbour for hosting? infringement? ‘…where that service provider ‘…where that advertisement has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. ’ does not enable an average internet user, or enables that user only with difficulty, to ascertain [the origin]. ’ 153

The end. Thank you! For publications, please search for ‘senftleben’ on www. ssrn. com. martin. senftleben@twobirds. com