A student asks: "what's the use?" Can you help?

Merpel's still trying to figure out what
pine trees do when they're not posing
for photographers ...
A student from Europe's far and frozen North has written with a question on which she would appreciate some assistance. Surrounded as she is by snow and pine trees (and presumably, at this time of year, pine cones too), she is "pining" for a little response and encouragement from the IP community. This is what she writes:
"I am currently writing a Masters thesis on Article 5 of the Trade Mark Directive ['Rights conferred in a trade mark'], specifically on the conditions of use "in the course of trade" and use "in relation to goods or services".

When reading CJEU case law for the purposes of finding out exactly what is the content of the condition of use "in relation to", I am increasingly convinced that the CJEU has departed from its decision in Case C-63/97 BMW v Deenik, in which it stated that the condition of "in relation to" is understood as "distinguishing use" or use "as a trade mark" or use to indicate the origin of the goods, in accordance with the 11th recital of the Preamble.

The condition seems to have been reduced to a descriptive labelling of what the use consists of (affixing/advertising etc.), but not a material assessment of whether the third party use is use as a trade mark and that the third party sign is used to indicate the origin of the goods.

The material assessment seems to have been moved in its entirety to the condition "affect or liable to affect the functions of the mark" - a condition which (in my opinion) to a great extent muddles the delimination [Merpel loves this word, which she has never previously met. It's not in her dictionary, but she thinks it comes from the Latin limen, a threshold, which means that 'deliminate' would be 'remove the threshold'] of trade mark law with comparative advertising and the unfair commercial practices directive.

My question is: What is your take on the relationship between the condition of use "in relation to goods and services" and the condition of use "affecting or liable to affect the functions of the mark"?"
This Kat nostalgically remembers the olden days when he believed that, in each context where the Directive referred to "use", it clearly meant something quite different.  But what do readers think? Do put his reader out of her suspense and help her to wow the examiners with an outstanding Masters thesis.
A student asks: "what's the use?" Can you help? A student asks: "what's the use?" Can you help? Reviewed by Jeremy on Sunday, November 18, 2012 Rating: 5


  1. Yeah, the ECJ seems to have scrapped that old doctrine.

    (But why's the Nordic (it's a jungle out there, I'm told) student asking things she knows already...)

  2. Prof. Dr. jur. Annette Kur takes issue with the “use as a mark”-question in Trademark Law and Theory, 2008, pp. 165: her recommendation that the “matter calls for regulatory action” seems to be wise, because it´s all in a mess thanks to the CJEU.
    Mats Björkenfeldt, Stockholm

  3. The work quoted by the previous commentator indeed provides for a good read in this respect.

    When use is not in relation to goods and services, see Red Bull (case C-119/10) and Google (joined cases C-236/08-C-238/08).

    "In relation to goods and services" aside, it will be interesting to see how the "adverse effect on the origin function" criterion is applied by national courts in light of Interflora (case C-323/09), or maybe worth developing within the scope of a thesis?

  4. Though it's a bit dated, being published in 2005, Trade Mark Use, which is funnily enough edited by the original founders of the IPKAT, has a multifaceted view of the meanings of use. It's published by Oxford UP and I guess it must be out of print by now.

  5. The Interflora-case of the ECJ definitely is worth reading through as well as the above mention Red Bull Case.

    As for your question, the "use" in relation to goods and services is aiming at the primary "function" of a trademark. Enabling customers to distinguish goods from one another.(5-1a,b TMD) Likelihood of Confusion is the big test here.

    Article 5-2 TMD, gives some extra protection for Trademarks with a 'repute'. Protecting the 'goodwill' and against Dilution. (not to mention the extra protection in the Benelux for all trademarks).

    The relation between both: In time diluting use (not per se 'as a mark'), could dilute a trademark in a manner that it is not longer suitable to fulfil its primary function (distinguish). Protecting only against use 'as a mark' is therefore not enough.

    Hopefully this is helpful.

    Greeting from The Netherlands

  6. "Delimination" from the verb delimit, to mean demarcate. The word is commonly used in computer programming.


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