CUTTING-EDGE ASSISTANCE IN GILLETTE CASE

Thank you Stephanie Bodoni, says the IPKat. On Friday, in his Translation Watch, he lamented the absence of an English-language text of the Advocate General's Opinion in Case C-228/03 Gillette v LA-Laboratories. Now Stephanie, of leading IP journal Managing Intellectual Property, has come to his rescue with the following note:

The national court (Suomen Korkein Oikeus – supreme court of Finland) would like to know under what circumstances the use of another company’s trade mark can be considered legal according to the trade marks Directive (Article 6(1)c of Directive 89/104.

The case concerns US company The Gillette Company, which owns the rights to the Gillette and Sensor marks, which are both registered in Finland for certain goods, including razors. In Finland, it is the Gillette Group Finland Oy (also known as Gillette) which controls the mark’s use and markets several razors and razorblades under the Gillette name. At the same time there is also Finnish company LA-Laboratoires Ltd Oy, which sells similar goods in the country, consisting like those of Gillette, of razors with handles and exchangeable blades, and marketed under the mark PARASON FLEXOR and including a statement on the packaging: “This blade fits all PARASON FLEXOR und GILLETTE SENSOR devices”.

The Court referred a series of questions to the ECJ, concerning article 6(1)c of the Trade Marks Directive, including: Which are the criteria under article 6(1)c of the Directive,
(a) according to which one has to establish whether a product is to be seen as a spare part or an accessory and
(b) according to which those products, which are neither spare parts or accessories, have to be determined, which could also belong to the field of application of this provision?

In its summary conclusion the Advocate General said:

For the reasons stated above, I am therefore of the opinion that the questions referred to the Court should be answered as follows:

1. For the applicability of Article 6(1)c of the trade marks directive it needs to be established if it is necessary to specify the other's mark as an indication of a product’s (or service’s) use, and if it raises any confusion as to the product or service’s origin so that, when assessing whether another's mark’s use is permissible, it does not matter whether the case concerns the main product, accessorize or spare parts.

2. The use of another’s mark as an indication of a product’s use is necessary if it is the only means to inform the consumers about the possible uses of the product.

3. A business operator observes the “reasonable customs in industry or trade” if his use of the mark does not raise the impression that there is a trade connection between him and the trade mark owner, and if it does not exploit/take advantage of the distinctiveness or the reputation of the mark. The fact that a business operator also sells those products and attaches to them another’s trade mark does not necessarily imply that he pretends a qualitative equivalence between his and the trade mark owner’s products. The behaviour of the business operator must be considered in light of a global assessment of all the facts.

4. The fact that a business operator who attaches another’s mark to one of his own products also sells the kind of products with which the first/original product must be used, constitutes an important element in the assessment of the permissibility of the trade mark’s use, but does not change the assessment criteria.

The IPKat is thrilled with this and awaits the ruling of the ECJ some time within the next six months. Merpel doesn't know why the IPKat's so interested: it's not as if he even shaves.

Shaving cats here and here