Advocate General Sharpston’s Opinion in Céline is now available. The ECJ was asked:
Must Article 5(1) of Directive (EC) 89/104 be interpreted as meaning that the adoption, by a third party without authorisation, of a registered word mark, as a company name, trade name or shop sign in the context of a business marketing identical goods, amounts to use of that mark in the course of trade, which the proprietor is entitled to stop by reason of his exclusive rights?The AG answered as follow:
Trade mark use
* The AG repeated the party line on Art.5(1)(a) trade mark use, i.e. use will infringe if ‘it is such as to distinguish the goods or services concerned and to affect the trade mark proprietor’s interests by encroaching upon the ability of his trade mark to fulfil its essential function of guaranteeing to customers the origin of his own goods or services. That will be true in particular if the use in question creates the impression that there is a material link in trade between the trade mark proprietor and goods or services of another origin. In that regard, it must be established whether the consumers targeted are likely to interpret the use of the sign as designating or tending to designate the origin of the goods or services’.
* The AG opined that mere adoption of a company name is unlikely to count as ‘use in the course of trade’ but adopting a trading name will own do so. At the end of the day though, it’s all a matter of fact.
The IPKat is glad that the AG hasn’t added another layer of complexity by formulating her own definition of trade mark use. It’s bad enough that the existing test is not particularly comprehensible, and he’s glad the issue is off to the Grand Chamber. He’s also waiting to see the result of Adam Opel, out next week.
The own-name defence
* Use of one’s own trade/company (as opposed to personal name) DOES fall within the Art.6(1)(a) own name defence. However, adoption of the name after someone else has registered the name as a trade mark is a matter to be considered under the honest practices proviso.
* In such circumstances, honesty will depend on whether the defendant had knowledge of the prior use. Mere ignorance of the prior use won’t automatically count as honesty. The defendant is also expected to exercise reasonable diligence ‘ascertaining that the name chosen does not conflict with, inter alia, an existing trade mark, and thus in verifying the existence of any such mark’. Where such a conflicting mark is found, honesty would require ‘at least contacting the trade mark proprietor and seeking his reaction. If he objected to use of the name on reasonable grounds (and any of the circumstances falling within Article 5 would seem, by definition, capable of providing reasonable grounds for objection), then subsequent use of the name objected to would not be in conformity with honest commercial practice’.
The IPKat is unimpressed with the AG’s circular approach to honest practices. It puts a great burden on would-be defendants with no purpose, since the likelihood of Art.5 infringement takes away the honesty unless there is consent. Such consent is unlikely to be forthcoming, and yet the defendant will be forced to put his trade rival on notice of his future business plans. This is a fine piece of legalism with no practical purpose.