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Tuesday, 28 February 2006

GILLETTE DEFENCES DECISION: WHAT THE FINNISH COURT SAID


Finnish trade mark attorney Jukka Palm of Berggren has provided the IPKat with a summary of the Finnish Supreme Court's decision in the Gillette case. This is the home leg of Gillette v LA Laboratories, in which the ECJ clarified the requirements for the applicaiton of Art.6(1)(c) of Directive 89/104. Jukka writes:

The Finnish Supreme Court rules in Gillette third-party use case

In Gillette Company & Gillette Group Finland (GC) v La-Laboratories Ltd Oy (LA), the Finnish Supreme Court has on 22 February 2006 (decision 2006:17) dismissed the action against the defendant who marketed razor blades under its PARASON FLEXOR trade mark. The decision is based on the interpretation of the ECJ’s preliminary ruling (case C-228/03).

LA had attached into its packagings red stickers which stated: ‘All Parason FLEXOR® and all Gillette SENSOR® HANDLES are COMPATIBLE with this razor blade’.

The Court held that the reference to GC’s trade marks was the only way to inform consumers about the intended purpose of LA’s razor blades. The court stated that such information is useful to consumer only when this sort of message is presented in an easily understood and perceived form.

The court reasoned that LA’s razor blade packaging featured the brand name PARASON FLEXOR ‘clearly and with bigger lettering’ and the sticker’s text merely clarified that those blades can be used with Gillette Sensor razors as well. In these circumstances the defendant’s use gave no impression that there would be a commercial link between these two undertakings.

The majority of the Court held that LA’s sticker was a ‘mere neutral announcement’ regarding the compatibility of Parason Flexor razor blades and Gillette Sensor handles. Therefore the defendant did not present its product as an imitation of the plaintiff’s well-known product. Quite to the contrary, the red sticker contributed LA’s efforts to capture consumer’s attention.

The Court concluded that defendant’s methods must be allowed in order to promote the undistorted system of competition in the EU market.

Two of the five judges partly dissented and stated that LA’s and GC’s trade marks had been presented side by side with identical letter size and typeface. Such a usage might create some confusion in the market place at least in the eyes of a consumer who superficially familiarizes with the product in question. As this sort of a risk was minor, the defendant had not acted contrary to the honest business practices. There was also no reason to require that a disclaimer should have been used in these circumstances in order to clarify that there is no link between these two undertakings.

The court concluded that the defendant’s use of GC’s mark was the only way to inform consumers even though this sort of statement could have been made much more neutrally by informing merely “This razor blade is compatible with Gillette Sensor handles”. The Finnish Supreme court chose to stress the importance of promoting competition within the EU market. In my view it cannot be ruled out that courts in some other member states might reason that usage such as LA’s would not be necessary for conveying neutral consumer information but the defendant was seeking to gain an unfair commercial advantage. The language used by the ECJ in case C-228/03 left room for dissimilar interpretations in different member states (see also Ipkat 18 May 2005).

There is also a new surprise twist in this case. According to Finnish newspaper Kauppalehti the claimant could possibly be fined for abusing its dominant position.

The IPKat says thanks Jukka - he's often filled with curiosity over what happens to the parties after the ECJ references.

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