European Trademark Law Opposition infringement II

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European Trademark LawOpposition infringement
II

• Alexander Tsoutsanis
• Visiting Professor from Leiden University
• Class 7 Feb. 3rd 2009

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topics

• Protecting well-known brands against dilution

• What use constitutes trade mark use ?

• Summary review

• Adidas v. Payless

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8-5 / 9-1c CTMR

• any sign which is identical with or similar to
  the Community trade mark in relation to goods or
  services which are not similar to those for which
  the Community trade mark is registered, where the
  latter has a reputation in the Community and
  where use of that sign without due cause takes
  unfair advantage of, or is detrimental to, the
  distinctive character or the repute of the
  Community trade mark.

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requirements

• Earlier mark ? registered
• Reputation ? in the Community
• Signs ? identical or similar
• Products ? dissimilar (?)
• Dilution ? damage/advantage
• Other ? without due cause

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reputation

• Reputation being known by significant
  part of public (Chevy)
• sign x product x awareness
• Where ? ? Identify territory
• ? Reputation in substantial part of
  territory is sufficient (Chevy)
• ? Not necessary to prove reputation throughout
  EU
• For what? ? Identify products
• With whom? ? Identify public
• known by a significReputation in the
  Community

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How to prove reputation?

• Reputation degree of awareness (results)
• Reputation ? only about spending marketing
  efforts
• In practice ? instruct client to provide good
  mix between input output
• Output market share, turnover, survey
• Input intensity, scope duration of use
• marketing advertising
• enforcement record etc.

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(dis)similar products

• Wording restricted to dissimilar products
• 2003 abolished by ECJ, extended to identical
• similar products
• The article cannot be interpreted in such sense
  that known trade marks would enjoy lesser
  protection if a sign is used for identical or
  similar goods or services than if a sign is used
  for dissimilar goods or services.
• (Davidoff v. Gofkid and Adidas v. Fitnessworld)

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• Consequence misconception in practice that
  (dis)similarity between the products was not a
  relevant factor anymore for proving dilution.
• 2008 ECJ emphasizes importance of
  (dis)similarity for accepting dilution (Intel)
• Even if the relevant section of the public ()
  is the same or overlaps to some extent, those
  goods or services may be so dissimilar that the
  later mark is unlikely to bring the earlier mark
  to the mind of the relevant public

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Damage

• Dilution of
• distinctiveness
• reputation
• Unfair advantage of
• distinctiveness
• reputation

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burden of proof

• Burden ? existence of a link does not dispense
  proprietor of the earlier mark from having to
  prove actual and present injury to its mark ()
  or a serious likelihood that such injury will
  occur in the future (Intel)
• Burden ? the stronger the earlier marks
  distinctive character and reputation the easier
  it will be to accept that detriment has been
  caused to it (Intel Chevy)

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• Burden ? it is not necessary for the earlier
  mark to be unique in order to establish such
  injury or a serious likelihood that it will occur
  in the future. (Intel)
• Burden ? a first use of an identical or similar
  mark may suffice, in some circumstances, 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 (Intel)

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most controversial part of Intel

• Burden ? () 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.

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Trademark Use - overview

• Fairly obvious in most cases
• Some examples in 9-2
• Less clear re. online use, e.g. adwords,
  metatags, twitter etc.
• 2007 trade name use may also qualify as trade
  mark use (Celine)
• 2007 role of essential function doctrine (Opel
  v. Autec) ?

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Key requirements

• In the course of trade
• in the context of commercial activity with a
  view to economic advantage and not as a private
  matter (Arsenal v. Reed)
• For the purpose of distinguishing goods or
  services
• which affects or is liable to affect the
  functions of the trade mark, in particular its
  essential function of guaranteeing to consumers
  its origin of the goods (Opel)

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EU v. US approach class discussion
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