Trade Mark Law
1. Definition and purpose
A trade mark may be defined as any sign (or combination of signs) which is ‘capable of distinguishing the goods or services of one undertaking from those of other undertakings’ (particularly words, letters, designs, numerals, figurative elements, the shape of goods or of their packaging) and in which an exclusive right has been acquired as a result of registration or use (Art 15(1) TRIPS; see also Art 2 Trade Mark Directive (Dir 2008/95) and Art 4 Community Trade Mark Regulation (Reg 207/2009), which add ‘capable of being represented graphically’). Early forms of production marks may be traced back to ancient times and were mostly used to indicate ownership but apparently also to identify the source or manufacturer of goods. The Middle Ages saw the development of guild marks, making it possible to control the observation of production standards imposed by the guild, and other marks which served identification purposes for the levy of taxes. First evidence of a private law protection similar to the modern function of trade marks, guaranteeing the identity of the origin of the trade-marked product to the consumer and enforceable in an action between private parties, is found in early modern law (Sandforth’s Case (1584), quoted in Southern v How (1618) 79 ER 1243 (KB)). The rise of supra-regional commerce, the development of large consumer markets and the increase of advertising activity during the 19th century created the need for a modern trade mark law which allowed private individuals to enforce their marks as product identifications in order to guarantee the identity of origin of their goods, a need which was satisfied by the legislation of that time (Art XVI Loi relative aux manufactures, fabriques et ateliers 1803; Markenschutzgesetz 1874; Trade Marks Registration Act 1875; Federal Trademark Laws of 1870, 1881 and 1905; Warenzeichengesetz 1894).
From the very beginning of modern trade mark law, its emergence was accompanied by international treaties, most notably the Paris Convention for the protection of industrial property of 1883. Today, the most relevant parts of international trade mark law are found in the (revised) Paris Convention, the TRIPS Agreement, the WIPO Trademark Law Treaty and (as far as international registration is concerned) the Madrid Agreement Concerning the International Registration of Marks including the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. These Conventions are also relevant for European trade mark law as the EU has acceded to TRIPS (and thus incorporated by reference Arts 1-12 and 19 of the Paris Convention, Art 2(1) TRIPS) and the Madrid Protocol (Council decisions 94/800 and 2003/793). As a result, Member States’ courts are—by virtue of EU law—required, when asked to apply national rules within a field to which the international treaty applies and in respect of which the EU has already legislated (such as trade marks), to do so ‘as far as possible in the light of the wording and purpose’ of the provisions in that international treaty (ECJ Case C-300/98 – Dior  ECR I-11307 para 47; recital 13 Dir 2008/95). On a European level, the EU Trade Mark Directive 89/104 (consolidated in Dir 2008/95) has harmonized substantial parts of the Member States’ laws, while the Community Trade Mark Regulation 40/94 (consolidated in Reg 207/2009) has created a genuine European trade mark right. Neighbouring fields of EU legislation concern the protection of geographical indications (Reg 510/2006), the law of internet domains (Reg 874/2004) and the law of unfair competition, in particular the law on misleading and comparative advertising (Dir 2005/29; Dir 2006/114).
Trade mark protection is considered to be a form of intellectual property, however with a rationale of protection quite different from patent or copyright law and much closer to the law of unfair competition (basic principles). While patents and copyrights are normally understood as an incentive for stimulating technological or artistic innovation and creativity in order ‘[t]o promote the Progress of Science and useful Arts’ (US Constitution Art I s 8 cl 8), trade mark rights are an ‘essential element in a system of undistorted competition’, enabling undertakings ‘to attract and retain customers by the quality of their goods or services, which is made possible only by distinctive signs allowing them to be identified’, thus protecting them ‘against competitors wishing to take advantage of the status and reputation of the trade mark by selling products illegally bearing that mark’ and securing to them the benefits of good reputation (ECJ Case C-10/89 – HAG  ECR I-3711 paras 13 ff; ECJ Case C-206/01 – Arsenal Football Club  ECR I-10273 para 47). For this reason, ‘the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin’ and to ‘guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality’ (recital 11 Dir 2008/95; ECJ Case 102/77 – Hoffmann La Roche  ECR 1139 para 7; ECJ Case C-206/01 – Arsenal Football Club  ECR I-10273 para 48).
From an economic perspective, the guarantee of an identity of origin, allowing one to distinguish the products of one undertaking from another, reduces customers’ search costs and helps to assure that the undertakings investing in quality will profit from the reputation-related rewards associated with their products or services (quality encouragement function). Therefore, the economic incentives in trade mark law do not flow from an exclusive right in the use and exploitation of some immaterial good, such as an invention or idea (as in patent or copyright law), but rather from the possibility of brand differentiation. As customers are led to differentiate between potentially substitutable products on some other basis (eg quality, reputation, cultural meaning associated with a trade mark) than price alone, they will tolerate price differences between the products. The escape from mere price competition becomes increasingly important in a globalized economy in which production costs can be lowered by moving plants to emerging countries, while ‘brand differentiation’ makes it possible to keep sales prices high and to defend them against newcomers competing exclusively on prices.
Another, more recent commercial function of trade marks is their potential as commercial signs of communication between an undertaking and a customer, making it possible to transport ‘cultural meaning’ which infuses commercial goods with some form of lifestyle valued by the demand side. A further economic function of trade marks—in this regard similar to other intellectual property rights—is their potential for the right holder to control distribution by restrictions in licence agreements which may exclude exhaustion and thus enable the right holder to oppose further commercialization of the products (ECJ Case C-59/08 – Copad  ECR I-3421 paras 52 ff). The plurality of trade mark functions has recently found its way into the jurisprudence of the ECJ, holding that trade mark ‘functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising’ (ECJ Case C-487/07 – L’Oréal  ECR I-5185 para 58).
2. The development of the law
Like almost no other area of private law, trade mark law has undergone a fundamental Europeanization since the 1990s. While the Court’s attention initially crystallized around Art 30 EC (Art 36 TFEU), the enactment of the Trade Mark Directive 89/104 (now Dir 2008/95) and of the Community Trade Mark Regulation 40/94 (now Reg 207/2009) have set off an avalanche of European Court of Justice (ECJ) (and, for the Community Trade Mark, also General Court of the European Union (GC)) decisions on trade mark law, making it impossible to answer central questions of trade mark law without reference to ECJ jurisprudence. The success of EU law in this field may be explained by two factors. On the one hand, the Trade Mark Directive—while rhetorically limiting harmonization ‘to those national provisions of law which most directly affect the functioning of the internal market’ (recital 4 Dir 2008/95)—effectively provides for an exhaustive harmonization of the conditions for obtaining and holding a registered trade mark and the grounds for refusal of a trade mark (recital 8 Dir 2008/95, ECJ Case C-363/99 – Koninklijke KPN Nederland  ECR I-1619 para 78) as well as a ‘complete harmonization of the rules relating to the rights conferred by a trade mark and accordingly define[s] the rights of proprietors of trade marks in the Community’ (Arts 5–7 Dir 2008/95, ECJ Case C-16/03 – Peak Holding  ECR I-11313 para 30). Significant areas outside the scope of EU law are only the protection of non-registered trade marks (Art 1, recital 5 Dir 2008/95) and most procedural questions (recitals 6, 9, 11 Dir 2008/95, for recent harmonization efforts ECJ Case C-405/03 – Class International  ECR I-8735 paras 73 ff and intellectual property (enforcement)). Another reason for the success of EU law appears to be the willingness of national courts to refer questions to the ECJ, a willingness which may be influenced by the specialization of courts and lawyers in this field and which is naturally beneficial for the development of an autonomous supranational law. In recent years, the willingness to use the procedure under Art 267 TFEU/234 EC has seemed to spill over to neighbouring fields such as copyright and unfair competition which may result in the whole area becoming a forerunner of European harmonization.
Another notable development is an increasing commercialization of trade mark law. This finds its expression in the importance of trade marks as an undertaking’s asset, an asset which may account for up to 70 per cent of the value of the company. Trade mark rights are also emerging as independent marketable assets which may be transferred ‘separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered’ (Art 17(1) Reg 207/2009; see also Art 21 TRIPS; § 27(1) German Markengesetz; Art L 714-1 Code de la propriété intellectuelle; s 24(1) Trade Marks Act 1994; § 11(1) Austrian Markenschutzgesetz; Art 46(2) Ley de Marcas 17/2001).
Finally, the last years seem to indicate a certain trend towards expansion of trade mark protection which is being countered—at least to a certain extent—by the case law of the ECJ. As an example, the open wording of Art 2 Dir 2008/95 (‘any signs capable of being represented graphically’) permits (in contrast to some former national laws such as the German Warenzeichengesetz) the protection of new forms of trade marks such as three-dimensional marks or trade marks consisting of sound signs, colours per se, tastes, olfactory signs or tactile impressions. In spite of the open wording of Art 2 Dir 2008/95, the ECJ was concerned about the exclusivity inherent in a trade mark right from which—if extended to non-specific subject matters such as the mere properties of the product—the trade mark holder could obtain an unfair competitive advantage since he could prevent his competitors from marketing goods with similar properties (ECJ Case C-321/03 – Dyson  ECR I-687 paras 38 ff, see further 3. a) below).
A similar development seems to have taken place regarding the interpretation of the wording ‘use in the course of trade in relation to goods or services’ in Art 5 (1,2) Dir 2008/95. While early decisions seemed to indicate a broad understanding of the definition of ‘use’ (ECJ Case C-63/97 – BMW/Deenik  ECR I-905 para 39), more recent judgments take a more differentiated position (ECJ Case C-2/00 – Hölterhoff  ECR I-4187 paras 16 ff; ECJ Case C-17/06 – Céline  ECR I-7041 para 23: ‘there is use “in relation to goods or services” (…) where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party’) which has yet to find its final contours. In a similar stance, the Luxembourg court has extended the limitations of Art 6(1)(a) Dir 2008/95 to trade names (ECJ Case C-245/02 – Anheuser Busch  ECR I-10989 para 81) and thus limited the reach of trade mark protection.
In the future it will be vital for the continuing success of European trade mark law that the ECJ secures its uniform application and promotes legal certainty by providing clear guidance to national courts. The European court should resist the temptation to avoid difficult issues by giving open or evasive answers in response to national references under Art 267 TFEU/234 EC or, worse, delegate the decision back to national courts. Next to the interpretation and development of EU trade mark law, the ECJ will increasingly be asked to define the relationship between trade mark law and neighbouring fields, thus having to develop the growing body of piecemeal EU secondary legislation into a consistent system of European market regulation (for the relationship with unfair competition ECJ Case C-533/06 – O2  ECR I-4231 paras 51, 69; ECJ Case C-487/07 – L’Oréal  ECR I-5185 paras 72 ff; advertising, comparative).
3. The contours of European trade mark law
EU trade mark law basically rests on three pillars, the EU Trade Mark Directive 2008/95, the Community Trade Mark Regulation 207/2009 and the EU Enforcement Directive 2004/48 (intellectual property (enforcement)). The following text concentrates on Dir 2008/95 as the other instruments are presented elsewhere in this work. It may be added that Dir 2008/95 is in large parts identical with the Trade Mark Regulation, thus making it possible to transfer case law from one instrument to another.
a) Signs of which a trade mark may consist
According to Art 2 Dir 2008/95, ‘a trade mark may consist of any signs capable of being represented graphically (…) provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’. This may include a trade mark consisting of a ‘sign which is not in itself capable of being perceived visually’ such as olfactory signs, ‘provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective’, ECJ Case C-273/00 – Sieckmann  ECR I-11737 para 55 (olfactory signs); ECJ Case C-104/01 – Libertel  ECR I-3793 paras 28 ff (colour per se); ECJ Case C-283/01 – Shield Mark  ECR I-14313 paras 55 ff (sound signs).
b) Ground for refusal or invalidity
Grounds for refusal or invalidity of a trade mark are found in Arts 3 and 4 Dir 2008/95. While Art 3(1) Dir 2008/95 establishes mandatory grounds for refusal, the grounds of Art 3(2) Dir 2008/95 are facultative for the Member States. The absolute grounds for refusal of registration in Art 3 pursue different aims of public interest. First, the requirement of distinctiveness in Art 3(1)(b) Dir 2008/95 and the exclusion of trade marks which have become customary (Art 3(1)(d) Dir 2008/ 95) are intended to preclude the registration of trade marks which are incapable of fulfilling the essential function of a trade mark, namely to distinguish the product or service of one undertaking from others which have a different origin (ECJ Case C-329/02 P – SAT.1  ECR I-8317 para 23; ECJ Case C-517/99 – Merz & Krell  ECR I-6959 para 28). However, a non-distinctive trade mark shall not be refused registration if, ‘following the use which has been made of it, it has acquired a distinctive character’ (Art 3(3) Dir 2008/95). This is the case where ‘a substantial proportion of the relevant class of persons’ associates a particular trade mark with a particular undertaking and no other undertaking (ECJ Case C-299/99 – Philips  ECR I-5475 para 65). While Art 3(1)(b) and (d) are not (primarily) concerned with the interest of competitors to keep a sign available, Art 3(1)(c) aims to preserve a certain ‘availability’ of signs, an interest which is connected with the need for undistorted competition and ensures ‘that descriptive signs or indications relating to the categories of goods or services … may be freely used by all’ (ECJ Joined Cases C‑108/97 and C‑109/97 – Windsurfing Chiemsee  ECR I-2779 para 25; ECJ Case C-102/07 – adidas  ECR I-2439 paras 22 ff). Article 3(1)(e) pursues a public interest comparable with the ‘availability’ concern, namely ‘to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors’ (ECJ Case C-299/99 – Philips  ECR I-5475 para 78), as such monopolies—unlike trade mark protection—are to be limited in time and granted only on the basis of other intellectual property rights.
While Art 3(1)(a)–(e) Dir 2008/95 may be considered as ‘trade mark internal’ grounds for refusal or invalidity of a mark (as they preserve the functions of trade mark law and avoid a monopolization of signs not justified by the purpose of trade mark law), the grounds of Art 3(1)(f), (h) and Art 3(2)(b), (c) pursue ‘trade mark external’ purposes, namely to prevent ‘trade marks which are contrary to public policy or accepted principles of morality’ (Art 3(1)(f) Dir 2008/95), cover ‘a sign of high symbolic value’ (Art 3(2)(b) Dir 2008/95, in particular religious symbols) or include badges, emblems and escutcheons (Art 3(1)(h), Art 3(2)(c) Dir 2008/95). Finally, a third group of grounds of refusal or invalidity aims at concordance with other areas of the law (in particular the law of unfair competition), excluding trade marks from registration which may ‘deceive the public, for instance as to the nature, quality or geographical origin of the goods or service’ in question (Art 3(1)(g) Dir 2008/95), and excluding also trade marks the use of which may be prohibited under legal provisions other than trade mark law (Art 3(2)(a) Dir 2008/95) or which were applied for in bad faith (Art 3(2)(d) Dir 2008/95). Finally, the further grounds of refusal contained in Art 4 Dir 2008/95 concern conflicts with earlier rights, in particular earlier trade marks, and thus pursue more a private than a public interest.
c) Rights conferred by a trade mark
Next to the rules on registration, Arts 5–7 Dir 2008/95 constitute the core of European Trade Mark Law, effecting ‘a complete harmonization of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the Community’ (ECJ Case C-16/03 – Peak Holding  ECR I-11313 para 30). Article 5 Dir 2008/95 deals with the rights conferred by a trade mark, while Art 6 defines certain limitations and Art 7 codifies the doctrine of exhaustion (intellectual property (exhaustion of rights)).
As far as the rights conferred by a trade mark are concerned, Art 5(1)1 Dir 2008/95 starts by clarifying that the registered trade mark confers an exclusive right on its proprietor. This exclusive right can, in principle, be infringed in three different ways, defined in the abstract in Art 5(1)2(a), Art 5(1)2(b) and Art 5(2) Dir 2008/95 and illustrated by examples of acts which may be prohibited in Art 5(3) Dir 2008/95. The first two forms of infringement (Art 5(1)2 Dir 2008/95) are mandatorily required by Dir 2008/95, while the last form (Art 5(2) Dir 2008/95) is drafted as an optional extension, subject to the Member States’ choice (all Member States except Cyprus have implemented Art 5(2) Dir 2008/95). According to Art 5(1)2 Dir 2008/95—which addresses the first two possible forms of infringement—a proprietor of a trade mark is ‘entitled to prevent all third parties not having his consent from using in the course of trade (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered’, and ‘(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public’.
Trade mark proprietors are thus able to prevent the use of their trade marks under Art 5(1)2 Dir 2008/95 if five cumulative conditions are satisfied (see ECJ Case C-17/06 – Céline  ECR I-7041 para 16): (i) that use must be ‘in the course of trade’, ie ‘in the context of commercial activity with a view to economic advantage and not as a private matter’ (ECJ Case C-206/01 – Arsenal Football Club  ECR I-10273 para 40) and in the alleged infringer’s ‘own commercial communication’ (ECJ Joined Cases C-236/08 to C-238/08 – Google France para 56); (ii) that use must be ‘without the consent of the proprietor of the mark’; (iii) that use must concern either an identical sign for identical goods or services (double identity, Art 5(1)2(a) Dir 2008/95, for the definition of identity ECJ Case C-291/00 – LTJ Diffusion ECR I-2799, paras 50 ff) or concern an identical or similar sign for identical or similar goods or services and cause a likelihood of confusion (Art 5(1)2(b) Dir 2008/95, ie ‘the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings’, ECJ Case C-278/08 – Bergspechte para 38), (iv) that use must be ‘in relation to goods or services’, ie for the ‘purpose of distinguishing the goods or services’, either by affixing the sign to the goods or services which the third party markets or by using the sign ‘in such a way that a link is established between the sign … and the goods marketed or the services provided by the third party’ (ECJ Case C-17/06 – Céline  ECR I-7041 paras 20, 22 ff; for referential use ECJ Case C-533/06 – O2  ECR I-4231 paras 33 ff); and (v) that use must ‘affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services’. While these requirements must, in principle, be fulfilled for both Art 5(1)2(a) and (b) Dir 2008/95, the ECJ seems to distinguish between lit a and b of Art 5(1)2 Dir 2008/95 as far as the relevant functions of the trade mark are concerned.
For the protection against use of an identical sign for identical goods or services (Art 5(1)2(a) Dir 2008/95), the relevant functions of a trade mark ‘include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising’ (ECJ Case C-487/07 – L’Oréal  ECR I-5185 para 58; for the advertising function see also ECJ Joined Cases C-236/08 to C-238/08 – Google France paras 91 ff). On the other hand, the protection against confusion (Art 5(1)2(b) Dir 2008/95) ‘requires that there be a likelihood of confusion and accordingly the possibility that the essential function of the mark may be affected’, thus resulting in a broader protection conferred by Art 5(1)2(a) than by Art 5(1)2(b) Dir 2008/95 (ECJ Case C-487/07 – L’Oréal  ECR I-5185 para 59). This difference may be justified by the distinction in recital 11 Dir 2008/95 between ‘absolute protection’ and protection depending on a likelihood of confusion, ie a ‘risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings’ (ECJ Case C-342/97 – Lloyd  ECR I-3819 para 17), but it may result in an extension of Art 5(1)2(a) Dir 2008/95 which lacks corresponding limitations in Art 6 Dir 2008/95 and comes close to the protection granted to reputed marks by Art 5(2) Dir 2008/95.
Beyond the prohibition of using identical or ‘confusing’ signs in Art 5(1)2(a) and (b) Dir 2008/95, Member States may additionally provide that the proprietor of a registered trade mark shall be entitled to prevent third parties without his consent ‘from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and 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’ (Art 5(2) Dir 2008/95). Trade mark protection based on Art 5(2) Dir 2008/95 thus requires—as Art 5(1) Dir 2008/95—use of an identical or similar sign in the course of trade without consent of the trade mark proprietor, but it does not require an ‘identity’ of sign and products as Art 5(1)2(a) Dir 2008/95 or a ‘likelihood of confusion’ as Art 5(1)2(b) Dir 2008/95. Instead, the infringements under Art 5(2) Dir 2008/95 are the consequence of a certain (eg visual, aural or conceptual) ‘similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them’ (ECJ Case C-408/01 – Adidas Salomon  ECR I-12537 para 29). In addition to such a link in the mind of the public, an infringement under Art 5(2) Dir 2008/95 requires the implication of a reputed mark (ie the mark ‘must be known by a significant part of the public concerned by the products or services which it covers’, ECJ Case C-375/97 – General Motors  ECR I-5421 para 31) and a certain form of injury to that mark, namely either detriment to the distinctive character of the mark (‘dilution’, ‘whittling away’ or ‘blurring’, see ECJ Case C-252/07 – Intel  ECR I-8823 paras 29, 77), detriment to the repute of that mark (‘tarnishment’ or ‘degradation’), or unfair advantage taken of the distinctive character or the repute of that mark (‘parasitism’ or ‘free-riding’, ECJ Case C-487/07 – L’Oréal  ECR I-5185 paras 38 ff with further explanation).
Finally, Art 5(5) Dir 2008/95 permits the Member States to maintain a ‘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’. Unlike Art 5(1) and (2) Dir 2008/95, where the use of a sign in relation to goods or services is undertaken for the purpose of distinguishing the goods or services in question, Art 5(5) Dir 2008/95 is ‘directed at “the use which is made of a sign for purposes other than distinguishing the goods or services”’ (ECJ Case C-17/06 – Céline  ECR I-7041 para 20). Apparently only Benelux law has made use of Art 5(5) Dir 2008/95.
The limits of trade mark protection are defined by Arts 6 and 7 Dir 2008/95 (to Art 7 Dir 2008/95 intellectual property (exhaustion of rights)). According to Art 6(1) Dir 2008/95, which ‘seeks to reconcile the fundamental interests of trade-mark protection with those of free movement of goods and freedom to provide services in the common market’ (ECJ Case C-558/08 – Portakabin para 57), the trade mark does not ‘prohibit a third party from using, in the course of trade, (a) his own name (natural or trade name, ECJ Case C-245/02 – Anheuser Busch  ECR I-10989 para 81) or address, (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services (ECJ Case C-48/05 – Opel  ECR I-1017 paras 42 ff), [or] (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts’ (Art 6(1) Dir 2008/95). The objective of Art 6(1)(c) Dir 2008/95, in particular, is ‘to enable providers of goods or services, which are supplementary to the goods or services offered by a trade mark proprietor, to use that mark in order to inform the public of the practical link between their goods or services and those of the proprietor of the mark’ (ECJ Case C-558/08 – Portakabin para 64).
However, Art 6 Dir 2008/95 applies only in so far as the third party uses the trade mark ‘in accordance with honest practices in industrial or commercial matters’. The ‘honest practices’ reflect the ‘duty to act fairly in relation to the legitimate interests of the trade mark proprietor’, taking into account, inter alia, whether the use by the third party is understood by the relevant public as establishing a link between the third party’s goods and those of the trade mark proprietor, and whether the third party ought to have been aware of that (ECJ Case C-245/02 – Anheuser Busch  ECR I-10989 paras 82 f; for further criteria ECJ Case C-228/03 – Gillette  ECR I-2337 paras 40 ff).
d) Genuine use and the sanctions for non-use
Further provisions of Dir 2008/95 deal, inter alia, with license agreements (Art 8 Dir 2008/95; ECJ Case C-59/08 – Copad  ECR I-3421), a special rule on estoppel by acquiescence (Art 9 Dir 2008/95; Verwirkung (estoppel)) and the requirement of genuine use of a trade mark within a period of five years following registration (Art 10 Dir 2008/95). Non-use within this period is sanctioned by loss of the exclusive right and revocation of the mark, unless there are proper reasons for non-use (Arts 11, 12(1) Dir 2008/95). In order to ‘reduce the total number of trade marks registered and protected in the Community’ (recital 9 Dir 2008/95), the term ‘proper reasons’ for non-use is to be given a narrow interpretation, covering ‘only obstacles having a sufficiently direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark’ (ECJ Case C-246/05 – Lidl  ECR I-4673 para 54). ‘Genuine use’, on the other hand, denotes ‘actual’ (not just internal) use of the mark on the market, ‘consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the … end user by enabling him … to distinguish the goods or services from others’ (ECJ Case C-495/07 – Silberquelle  ECR I-137 para 17). Use of the mark ‘must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns’ (ECJ Case C-40/01 – Ansul  ECR I-2439 para 37). In addition to non-use, a trade mark is liable to be revoked if, after the date on which it was registered (for the time before registration Art 3(1)(b)–(d), (g) Dir 2008/95) ‘in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered’ or if, ‘in consequence of the use made of it by its proprietor, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those products or services’ (Art 12(2) Dir 2008/95).
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