Next week in the ECJ

The European Court of Justice is opening quietly this week, after the long summer break, but next Tuesday (11 September) it has something that all trade mark aficionados have been looking forward to: the ruling in Case C-17/06 Céline, a reference from the Cour d'appel, Nancy (France).

Right: The legal team acting for trade mark owner Céline arrive at the ECJ, intent upon making an impression on Europe's top jurists

The question is a short one:

"‘Must Article 5(1) of Directive 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 Advocate General, Eleanor Sharpston QC, advised the ECJ last January that the question should be answered thus:

"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.

Subsequent use of such a name in the course of trade must be assessed by the competent court in order to determine whether it constitutes use in relation to goods or services for the purposes of that provision, that is to say, whether 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 right of the trade mark proprietor to prohibit such use is subject to the limitation in Article 6(1)(a) of Directive 89/104, 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".

At the time, one quarter of the IPKat team reported that the Kat was

"... 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".

Another quarter of the team is not so unimpressed: he agrees that the criticism is valid where the trade mark in question is a highly distinctive made-up one, but thinks it appears far less so where the trade mark is of low distinctiveness and has a largely descriptive flavour to it. If both the trade mark owner and the would-be company name registrant inhabit the world of business and commerce in which time is money and resources invested in dispute resolution are rarely welcome, notification may be welcomed by both sides. Merpel adds,

Céline website here (best enjoyed with the sound turned off)
Céline Dion here
nutty stuffed eggplant recipe here


On the same day there will also be Opinions in two further cases. The first is Case C-201/06 Commission of the European Communities v French Republic. The Commission is seeking a declaration that, by requiring that a parallel imported plant protection product and a reference product have a common origin, the French Republic has failed to fulfil its obligations not to erect barriers to the free movement of goods under Article 28 EC. Essentially,

"In France, the grant and continuation of an import authorisation in respect of parallel imports of plant protection products from another Member State where they are lawfully placed on the market are subject to the requirement that parallel imported plant protection products and reference products have a common origin.

This constitutes a restriction on the free movement of plant protection products that is incompatible with Article 28 EC, is not justified on grounds of the protection of public health, animal health or the environment and is disproportionate in relation to the goal to be achieved".

The second is Case C-328/06 Alfredo Nieto Nuño v Leonci Monlleó Franquet, a request for a preliminary ruling from the Juzgado Mercantil 3, Barcelona, Spain. Asks the court,

"Must the concept of trade marks which are "well known" in a Member State, referred to in Article 4 of Council Directive 89/104, be taken to indicate solely and exclusively the degree of knowledge and establishment in a Member State or in a significant part of the territory of that State, or may the determination of whether a mark is well known be linked to a territorial scope which does not coincide with that of the territory of a State but rather with an autonomous community, region, district or city, depending on the goods or services which the mark covers and the persons to whom the mark is actually addressed, in short, depending on the market in which the mark is used?"

Finally, on Wednesday 12 September the ECJ gives judgment in Case C-234/06 P Ponte Finanziaria v Office for Harmonisation in the Internal Market and F.M.G. Textiles (formerly Marine Enterprise Projects). You can read the story so far, together with the IPKat's confident prediction and Merpel's doubts, on the earlier IPKat post here.