Under Article 5(1)(a) of the Trade Marks Directive, the proprietor of a registered trade mark may prevent any use in the course of trade, without his consent, of a sign identical to his trade mark in relation to goods or services identical to those for which the mark is registered.
The question however the Advocate General has recently been asked by a French Court was whether that right can be exercised, by a trader who has registered a name as a word trade mark in respect of certain goods, against another trader who, without consent, has adopted the same name as a company name and shop sign in the context of a business marketing goods of the same kind.
The following, inter alia, may be prohibited under Article 5:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign on business papers and in advertising.
The Opinion found that the mere adoption of a company or trade name similar or identical to an existing trade mark does not constitute use within the meaning of Article 5(1) of Council Directive 89/104/EEC.
Subsequent use of such a name in the course of trade must be assessed by a court in order to determine whether it constitutes use, that is to say, use, which is used to distinguish the goods or services concerned and to affect the trade mark owners 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 right of the trade mark proprietor to prohibit such use is subject to the limitation in Article 6(1)(a) of Directive 89/104/EEC, which is in turn conditional on the observance by the user of the name of honest practices in industrial and commercial matters. Use will not be in accordance with such practices in particular if it gives the impression that there is a commercial connection between the user and the trade mark proprietor, affects the value of the trade mark by taking unfair advantage of its distinctive character or repute or entails the discrediting or denigration of that mark. Honest practice in relation to the adoption of a name for use in trade implies reasonable diligence in contacting the proprietor of any similar or identical trade mark registered in respect of goods or services similar or identical to those in relation to which the name is to be used, and complying with any reasonable condition requested, within a reasonable period, by such a proprietor.
Courtesy of the opinion of Advocate General Sharpston delivered on 18 January 2007 in the case of Case C-17/06 and Celine SÃƒ rl – v- Celine SA