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Thursday, 12 June 2008

Even more on O2 - this time, trade mark use


The IPKat thinks it's worth giving some attention to the potential trade mark use issue in O2. It could have been argued that there was no infringement because H3G wasn't using the mark to identify its own services, but rather to identify O2's services, for the purposes of making a comparison with them.

The ECJ says at para.36:

"the use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104."

So the court seems to be implicitly suggesting, consistent with Adam Opel, that the use must be use by the defendant for his OWN goods. However, the court seems to think using someone else's mark in a comparative advert to make a comparison with the claimant's goods is use for the defendant's goods, rather than for the claimant's.

The IPKat is not sure this makes sense, because if you use someone else's mark in a comparative ad, you're using the mark to identify that someone else's goods (otherwise the comparison won't work). Perhaps the key questions is what is meant by use 'in relation' to goods under Art5(1)(a) or, under Art.5(1)(b), when the defendant's goods are 'covered' by the mark.

As a follow-up to that point, although Art.5(1)(b) uses the term 'covered by', s.10(2) of the UK Trade Marks Act 1994 uses the words 'in relation to'. Did the drafter of the TMA know something that we don't?

The plot thickens if you take a look at Art.12 (grounds for revocation). There the Directive talks about use ‘in connection’ with goods. Again, the TMA talks about use ‘in relation’ to goods.


4 comments:

Anonymous said...

With respect, you've missed the point Ilanah. What the ECJ is saying in para 36 is that the use of the competitor's mark in a comparative advertisement is both in relation to the competitor's goods and in relation to the advertiser's goods. The analysis is exactly the same as that of Sir Wilfrid Greene MR in Bismag v Amblins [2940] RPC 209 at 230 which was cited to the Court.

This is a shift away from Adam Opel and back to BMW even though the latter case is not mentioned.

Now think about where this takes us on Art. 5(1)(a) and, particularly, Art. 5(2).

Wolfgang Sakulin said...

I have to agree with Ilanah that this is probably a major shift in the 'trademark use' debate. In fact it seems to me that the trademark use criterion is somewhat dead after this judegement.

First, I think that we are not back at BMW/Deenik. That case was about an unlicensed dealer using the BMW logo to advertise his own goods and services, i.e. BMWs and repairs.

Second, it seems a logical argument that a trademark used in comparative advertising is used simultaneously in relation to the other trader's goods as well as to the own goods. However, such simultaneous use may very often be a given as soon as a trader opens his mouth. Use in the course of trade of another right holder's trademark is in 9 cases out of 10 directly or indirectly related to the own goods and services.
In my opinion, this new interpretation in para 36 opens the doors for an 'indirectly in relation to goods and services' criterion, which in fact means that'tradermark use' has become meaningless or at least very hollow.

Anonymous2 said...

I agree with Wolfgang and Ilanah and I think that anonymous above "may have missed the point".

This decision appears to be a definite shift in the "trade mark use" discussion and I again agree with Wolfgang that we are not back to BMW/Deenik.

Anonymous said...

it seems that the decision can be read in 2 ways:

(1)it is necessary to be using the mark to indicate origin - in which case the court held that in a comparative advert they are using the mark to indicate origin; the origin of the claimant or

(2)by interpreting art5(1)against the interpretation of the english courts they have indeed returned to the BMW position of any use of a mark potentially being infringing use

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