tag:blogger.com,1999:blog-5574479.post7344394044972172081..comments2024-03-29T06:53:23.405+00:00Comments on The IPKat: Even more on O2 - this time, trade mark useVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-5574479.post-39393219691517326302008-06-16T19:42:00.000+01:002008-06-16T19:42:00.000+01:00it seems that the decision can be read in 2 ways:(...it seems that the decision can be read in 2 ways:<BR/><BR/>(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<BR/><BR/>(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 useAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76776650132377657022008-06-15T19:25:00.000+01:002008-06-15T19:25:00.000+01:00I agree with Wolfgang and Ilanah and I think that ...I agree with Wolfgang and Ilanah and I think that anonymous above "may have missed the point". <BR/><BR/>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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59138746530744368142008-06-13T10:03:00.000+01:002008-06-13T10:03:00.000+01:00I have to agree with Ilanah that this is probably ...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. <BR/><BR/>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. <BR/><BR/>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. <BR/>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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87820314085442071822008-06-13T08:17:00.000+01:002008-06-13T08:17:00.000+01:00With respect, you've missed the point Ilanah. What...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.<BR/><BR/>This is a shift away from Adam Opel and back to BMW even though the latter case is not mentioned.<BR/><BR/>Now think about where this takes us on Art. 5(1)(a) and, particularly, Art. 5(2).Anonymousnoreply@blogger.com