A trade mark is a sign by which the goods or services of one undertaking can be distinguished from the goods and services of other undertakings. By registering a trade mark, the trade mark proprietor acquires a trade mark right. This is an exclusive right which enables the trade mark proprietor to take action against the use of identical or similar signs by third parties. In the case of an EU trade mark, this right applies throughout the European Union. In the case of a Benelux trade mark, this right applies only within the Benelux.
However, the trade mark right is not unlimited. Infringement of a European Union trade mark only occurs when a third party uses a sign in the course of trade without authorisation and one of the grounds for infringement set out in Article 9(2) of the European Union Trade Mark Regulation (EUTMR) is met. A distinction is made between the use of an identical sign for identical goods or services (point (a)), use where there is a likelihood of confusion (point (b)), and use which takes unfair advantage of or is detrimental to a well-known trade mark (point (c)). Which ground for infringement applies depends, in particular, on the degree of similarity between the signs and the goods and services, and on the reputation of the trade mark.
The starting point: use of a sign in relation to goods or services
For the purposes of Article 9 of the EU Trade Mark Regulation, it must therefore first be determined whether there is relevant use of the sign. This may be the case, for example, where the sign is affixed to products or packaging, or is used in the sale or offering of goods, in import or export, in advertising or as a trade name. Use that takes place exclusively in the private sphere is, in principle, excluded from this.
Furthermore, the manner in which the sign is used is important. Not every use of a word, name or image constitutes trade mark infringement. There must be use of the sign in the course of trade, in a manner which impairs or is likely to impair the functions of the trade mark. The primary function of the trade mark is to indicate origin. The trade mark must enable the consumer to identify the commercial origin of the goods or services. In addition, the investment function or the advertising function may also be relevant.
Article 9(2)(a) of the EU Trade Mark Regulation: identity
Identity exists where a third party uses a sign that is identical to the EU trade mark in respect of the same goods or services as those for which the trade mark is registered. The sign need not be exactly the same in every detail. Minor, insignificant differences that go unnoticed by the average consumer may still be regarded as identical. Where both the sign and the goods or services are identical, the trade mark proprietor does not also need to demonstrate that confusion arises amongst the public.
However, the use must impair or be capable of impairing a function of the trade mark. This relates in particular to the trade mark’s function of indicating to consumers the undertaking from which a product or service originates (the function of indicating origin).
Practical example
A well-known example of the use of an identical sign for identical goods is the Arsenal v Reed judgment of the Court of Justice. In this case, a trader was selling, amongst other things, scarves and other supporters’ merchandise bearing the sign ARSENAL outside Arsenal FC’s stadium. These products did not originate from Arsenal itself, nor were they sold with the club’s authorisation.
Arsenal had registered the name ‘ARSENAL’ as a trade mark for, amongst other things, clothing. The trader was therefore using the same sign for the same type of goods as those for which the trade mark had been registered. According to the Court, Arsenal was entitled to oppose this use, as it could give consumers the impression that the products originated from Arsenal or that there was a commercial link with the club. This could undermine the primary function of the trade mark, namely to indicate the origin of a product.
Article 9(2)(b) of the EU Trade Mark Regulation: identity and likelihood of confusion
Article 9(2)(b) of the EU Trade Mark Regulation applies where a sign is identical with or similar to a Union trade mark and is used in relation to the same or similar goods or services, thereby giving rise to a likelihood of confusion among the relevant public. This also covers situations where the public believes that the goods or services originate from economically linked undertakings (risk of association). The mere suggestion that two trade marks are related is not sufficient in this regard.
Whether there is a likelihood of confusion is assessed on a global basis, whereby the degree of attention may vary depending on the category of goods or services. The overall impression of the trade mark and the sign on the relevant public is central to this assessment. Factors taken into account include the visual, aural and conceptual similarity between the two signs, the degree of similarity between the goods or services for which the trade mark is registered and for which the signs are used, and the distinctive character of the earlier trade mark.
Practical example
A well-known example is the SABEL v Puma judgment. SABEL wished to register a figurative mark depicting a leaping big cat, whilst Puma already had an earlier figurative mark featuring a leaping puma. Both marks were used, amongst other things, for clothing and leather goods. The question was whether the similarity between the two images could lead to confusion amongst the relevant public.
The Court of Justice emphasised that one should not focus on a single element of the trade marks, but rather on the overall impression they create on the average consumer. In this regard, the visual, aural and conceptual similarities, as well as the distinctive character of the earlier trade mark, play a role. The fact that both trade marks depicted a leaping big cat was not, in itself, sufficient to establish a likelihood of confusion.
Article 9(2)(c) of the EU Trade Mark Regulation: protection of well-known trade marks
Article 9(2)(c) of the EU Trade Mark Regulation affords well-known EU trade marks broader protection. Under this provision, the proprietor of a well-known trade mark may take action against the use of an identical or similar sign, irrespective of whether the goods or services are identical or similar.
A trade mark is considered well-known if it is known to a substantial part of the public for whom the goods or services in question are intended. The reputation need not extend to the entire territory of the Union. The trade mark must be well-known in a substantial part of the Union, although, subject to certain conditions, recognition in a single Member State may also suffice.
For protection under sub-paragraph (c), the relevant public must make a connection between the sign and the well-known trade mark. There is no requirement for a likelihood of confusion in this regard. Subsequently, the use must, without valid reason, lead to one of the following forms of infringement: taking unfair advantage of the distinctive character or reputation of the trade mark, diluting the distinctive character, or damaging the reputation of the trade mark.
Practical example
Free-riding
This occurs when a third party benefits from the reputation, appeal or image of a well-known trade mark without having made comparable efforts themselves. The user is, as it were, attempting to free-ride on the reputation that the trade mark proprietor has built up. For example, a seller might promote their own product as ‘the Rolls-Royce of bananas’. This statement may capitalise on the luxurious and exclusive reputation and image of the Rolls-Royce brand. The brand is then used to make the seller’s own product more appealing.
The Court of Justice described this in L’Oréal v Bellure as ‘riding on the coattails’ of a well-known trade mark in order to benefit from its appeal, reputation and prestige.
Dilution
Dilution occurs when a well-known trade mark gradually loses its distinctive character. Where a well-known trade mark is used increasingly frequently by others for different products, the association between the trade mark and the original trade mark proprietor may weaken, thereby undermining its function as an indication of origin.
An example where dilution was at issue is the LEGO v Betonblock case. Betonblock frequently used the sign ‘Lego’ on its website in connection with moulds for making stackable concrete blocks. LEGO argued, amongst other things, that this use detracted from the distinctive character of its well-known trade marks.
The judge hearing the interim application explained that dilution may occur when the identity of a well-known trade mark erodes due to the use of another sign and loses its impact on the public. In this case, however, that threshold was not met. Betonblock’s products were aimed at a completely different audience to LEGO’s toys, and it had not been shown that the use altered the economic behaviour of the average consumer. The case thus clearly demonstrates that a mere association with a well-known trade mark is not in itself sufficient to constitute dilution.
Damage to reputation
This occurs when the use of the sign is likely to damage the reputation of the well-known trade mark. This may be the case, for example, where the trade mark is associated with goods or services that do not fit with the image or quality with which the trade mark is associated by the relevant public.
A classic example from Benelux trade mark law is Claeryn/Klarein. Claeryn was a well-known brand of jenever, whilst Klarein was used for a cleaning product. Although no one would likely assume that the jenever and the cleaning product came from the same company, the association with a cleaning product could undermine the appeal of the jenever brand. The association with soap or a cleaning product was not appropriate for a product intended for consumption.
Conclusion
Article 9(2) of the Trade Marks Act therefore does not provide for a general test that merely examines whether a sign resembles a trade mark. Which ground for infringement and which assessment apply depends on the relationship between the signs, the goods or services in question and, in the case of well-known trade marks, the reputation of the trade mark. Legal limitations on trade mark law, such as referring use and exhaustion, may also stand in the way of a successful claim of trade mark infringement.
Would you like to know more? Please feel free to contact Maurits or one of the other specialists from the team.
