"What about Article 5(5)?" A trade mark enthusiast asks ...

The IPKat and Merpel are always happy to help their readers, particularly when (i) it doesn't cost them anything and (ii) the enquiry is an interesting one.  Today the Kats received one such enquiry, from a reader who wants to know a bit about Article 5(5) of the European Union's harmonising (more correctly, approximating) trade mark directive, this being Directive 2008/95 to approximate the laws of the Member States relating to trade marks.

First, let's put Article 5(5) into context. Article 5 of the Directive bears the title "Rights conferred by a trade mark". Articles 5(1) and 5(2) list the three basic types of infringement:

(i) "double identity", where the alleged infringement consists of using the identical mark to that registered by the plaintiff, in respect of exactly the same goods or services for which it is registered,
(ii) where either the mark or the goods/services are similar, or one is identical and the other is similar and, on account of the similarity, there exists a likelihood that consumers will be confused, and
(iii) what is loosely described as "tarnishment" or "dilution" of the reputation or distinctive character of a mark that is in use, without due cause. 

 After Article 5(3) gives examples of types of activity that can be regarded as using someone else's trade mark, Article 5(4) adds the proviso that, with regard to all except "double identity" infringements, anything that wasn't legally regarded as an infringement before the original version of the Directive came into force doesn't become an infringement on account of the implementation of the Directive in the Member State in which the trade mark owner tries to enforce it. Then we get to Article 5(5).

Under Article 5(5) of the Directive,

Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

This Kat has always been led to believe that it is a creature of Benelux law that somehow crept into the pan-European scheme of things and that, while it does exist in that low-lying corner of the Old Continent, it has not spread beyond it. However, he is not au fait with the domestic trade mark laws of many EU Member States, especially the most recent accessions, and doesn't know if they have opted for this extra level of protection for marks with a repute or distinctive character.  Nor does he know whether implementation of Article 5(5) has been considered, or is being considered, anywhere in the EU, though he recalls (or thinks he recalls) that the Max Planck Institute's Study on the Overall Functioning of the European Trade Mark System [here; briefly noted by the IPKat here] was keen to see this provision adopted by Member States.

Our reader wants to know: (i) is there any national or regional case law in Europe that makes reference to Article 5(5), (ii) are there any live proposals for its promotion and (iii) does anyone really care? If you can assist, please post your comments and information below.