COMPARATIVE ADVERTISING  AND TRADE MARK USE

By judgment of the Court of Justice in Case C-533/06 of 12 June 2008 it was held that a trade mark proprietor is not entitled to prevent the use of a sign identical with, or similar to, a mark in a comparative advertisement if there is no likelihood of confusion on the part of the consumer between the advertiser and the proprietor of the mark or between the advertiser’s marks, goods or services and those of the proprietor of the mark

Under the Community trade mark directive (1), the proprietor of a mark is entitled to prevent the use, in the course of trade, of a sign which is identical with the trade mark in relation to goods or services which are identical and the use of a sign which is similar to the trade mark if there is a likelihood of confusion, which includes the likelihood of association between the sign and the trade mark.

The Community directive on comparative advertising (2) provides that comparative advertising is to be permitted under certain conditions, inter alia that it is not misleading, that it does not create confusion in the market place between the advertiser and a competitor or between trade marks, that it does not discredit or denigrate a trade mark, and that it does not take unfair advantage of a trade mark.

To advertise its mobile telephone services O2 uses bubble images in a host of ways and is the proprietor of two British national trade marks which consist of a static picture of bubbles.
In 2004, Hutchison 3G (‘H3G’), a competitor of O2 which markets its services under the name ‘3’, launched an advertising campaign for its pay-as-you-go service known as ‘Threepay’. To that end, it broadcast a television advertisement in which it compared the price of its services with those of O2. That advertisement began by using the name ‘O2’ and moving black-and-white bubble imagery, followed by ‘Threepay’ and ‘3’ imagery, together with a message that H3G’s services were cheaper in a specific way.

(1) Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).
(2) Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising (OJ 1984 L 250, p. 17), as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997 (OJ 1997 L 290, p. 18).

O2 brought proceedings for infringement of its bubbles trade marks before the High Court, although it accepted that the price comparison in the advertisement was true and that that advertisement was not misleading. The action was dismissed. O2 therefore appealed against that judgment before the Court of Appeal, which asked the Court of Justice whether a proprietor of a mark is entitled to prevent the use of a sign which is identical with, or similar to, its mark in a comparative advertisement which does not give rise to a likelihood of confusion between the advertiser and a competitor or between the advertiser’s marks, goods and services and those of a competitor.

As a preliminary point, the Court explains the interaction between the trade mark directive and the directive on comparative advertising. It considers that the use, in a comparative advertisement, of a sign identical with, or similar to, a mark of a competitor for the purposes of identifying the latter’s goods and services may be prevented under the trade mark directive. However, the Court notes that the legislature sought to promote comparative advertising and, to that end, to limit to a certain extent the right conferred by the mark.

In order to reconcile the protection of marks and the use of comparative advertising, the Court notes that the proprietor of a trade mark is not entitled to prevent the use, by a third party, of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions under which comparative advertising is permitted. Nevertheless, if there is a likelihood of confusion between the advertiser and a competitor or between the advertiser’s trade marks, goods or services and those of a competitor, the advertisement does not satisfy all the conditions laid down in the directive on comparative advertising under which comparative advertising is permitted and the proprietor of the mark is entitled to prevent the use of a sign identical with, or similar to, his mark.

In response to the question referred by the Court of Appeal, the Court of Justice points out that a proprietor of a mark may prevent the use of a sign which is similar to his mark if four conditions are satisfied: that use must be in the course of trade; it must be without the consent of the proprietor of the mark; it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered; and it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public. The Court notes that the first three conditions are satisfied in the case in the main proceedings. By contrast, in accordance with the referring court’s own findings, the use by H3G of bubble images similar to the trade marks did not give rise to a likelihood of confusion on the part of consumers. The advertisement, as a whole, was not misleading and, in particular, did not suggest that there was any form of commercial link between O2 and H3G. Consequently, the fourth condition is not satisfied in the case in the main proceedings.

Consequently, the Court finds that the proprietor of a registered trade mark is not entitled to rely on his trade mark rights to prevent the use, by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark is registered where such use does not give rise to a likelihood of confusion on the part of the public.

Source: Press release of the European Court of Justice of 12 June 2008


THREE AND TWO STRIPES

By judgement in the Case C-102/07 of 10 April 2008 -  adidas AG and Others v. Marca Mode CV and Others - the European Court of Justice held that a general interest to leave certain signs like stripes being descriptive indications available to everybody does not restrict the exclusive rights of a trade mark owner per se, because he cannot prohibit third parties from using them if  such use is not unfair.

Figurative trade marks being composed by three vertical, parallel stripes of equal width and featured on the sides of sports and leisure garments in a colour contrasting with the basic colour of those garments on the one side and same products being amrked by trade marks being composed by only two parallel stripes and being coloured and contrasting similarily were firstly found unsimilar, because  the requirement of availability of certain signs is irrelevant in the assessment of likelihood of confusion. The assessment of likelihood must be based on the public’s perception of the goods covered by the mark of the proprietor on the one hand and the goods covered by the sign used by the third party on the other. The national court must determine whether the average consumer may be mistaken as to the origin of sports and leisure garments featuring stripe motifs in the same places and with the same characteristics as the stripes motif of adidas, except for the fact that they consist of two rather than three stripes.

Secondly  the Court held marks with a special reputation that their protection does not require the likelihood of confusion between the sign and the mark, if the relevant public establishes a link between the two owners of the conflicting marks. The requirement of availability is extraneous both to the assessment of the degree of similarity between the mark with a reputation and the sign used by the third party and to the link which may be made by the relevant public between that mark and the sign. In those cases likelihood of confusion cannot constitute a relevant factor for determining whether the use of the sign takes unfair advantage of the repute of the mark.

Finally, the Court stated that, even though the proprietor of a trade mark cannot prohibit a third party from using descriptive indications in accordance with honest practices, the requirement of availability does not constitute in any circumstances an independent limitation of the effects of the trade mark. In order for a third party to be able to plead the limitations of the effects of a trade mark contained in the directive on trade marks and to rely on the requirement of availability, the indication used by it must relate to one of the characteristics of the goods. The purely decorative nature of the two-stripe sign pleaded by the companies in question does not give any indication concerning one of the characteristics of the goods.

Source: Press release of the European Court of Justice


European community law and disclosure of personal data in civil proceedings on copyright law protection

Community law does not require the Member States, in order to ensure the effective protection of copyright, to lay down an obligation to disclose personal data in the context of civil proceedings

By judgment of the Court of Justice in Case C-275/06 Productores de Música de España (Promusicae) v Telefónica de España SAU it was ruled that community law does not require the Member States, in order to ensure the effective protection of copyright, to lay down an obligation to disclose personal data in the context of civil proceedings

There are several Community directives 1 whose purpose is that the Member States should ensure, especially in the information society, effective protection of industrial property, in particular copyright. Such protection cannot, however, affect the requirements of the protection of personal data. The directives on the protection of personal data 2 also allow the Member States to provide for exceptions to the obligation to guarantee the confidentiality of traffic data.

Promusicae is a Spanish non-profit-making organisation of producers and publishers of musical and audiovisual recordings. It applied to the Spanish courts for an order that Telefónica should disclose the identities and physical addresses of certain persons whom it provided with internet access services, whose IP address and date and time of connection were known. According to Promusicae, those persons were using the KaZaA file exchange program (peer-to-peer or P2P) and providing access in shared files of personal computers to phonograms in which members of Promusicae held the exploitation rights. It therefore sought disclosure of the above information in order to be able to bring civil proceedings against the persons concerned.

1 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1), Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10), and Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45, and corrigendum, OJ 2004 L 195, p. 16),

2 Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995 L 281, p. 31) and Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) (OJ 2002 L 201, p. 37).

Telefónica argued that, under Spanish law,3 the communication of the data sought by Promusicae was authorised only in a criminal investigation or for the purpose of safeguarding public security and national defence.

The Spanish court asks the Court of Justice of the European Communities whether Community law requires the Member States to lay down, in order to ensure effective protection of copyright, an obligation to communicate personal data in the context of civil proceedings.

The Court of Justice notes that the exceptions permitted by the directives on the protection of personal data include the measures necessary for the protection of the rights and freedoms of others. As the directive on privacy and electronic communications does not specify the rights and freedoms concerned by that exception, it must be interpreted as expressing the Community legislature’s intention not to exclude from its scope the protection of the right to property or situations in which authors seek to obtain that protection in civil proceedings. It does not therefore preclude the possibility for the Member States of laying down an obligation to disclose personal data in the context of civil proceedings. However, it does not compel the Member States to lay down such an obligation.

As to the directives on intellectual property, the Court of Justice finds that they too do not require the Member States to lay down, in order to ensure effective protection of copyright, an obligation to communicate personal data in the context of civil proceedings.

That being so, the Court points out that the present reference for a preliminary ruling raises the question of the need to reconcile the requirements of the protection of different fundamental rights, namely the right to respect for private life on the one hand and the rights to protection of property and to an effective remedy on the other.

The Court concludes that the Member States must, when transposing the directives on intellectual property and the protection of personal data, rely on an interpretation of those directives which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with the directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality.

3 Law 34/2002 on information society services and electronic commerce of 11 July 2002 (BOE No 166 of 12 July 2002, p. 25388).

Press release of the European Court of Justice 5/08  29 January 2008

PRESS RELEASE No 11/08 off 26 February 2008
Judgment of the Court of Justice in Case C-132/05
Commission of the European Communities v Federal Republic of Germany

Similarity of descriptive marks

By judgment of the European Court of first instance (Second Chamber) of 27 February 2008 it was held that the word mark WORLDLINK and an earlier national figurative mark LiNK covering similar financial services were confusingly similar - Case T‑325/04.

The court found that the services ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’ are covered by the term ‘financial affairs’as a general category of services. In view of the descriptive nature of the element ‘LINK’ the court confirmed preceding case‑law, that for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see Case T-153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II-1677, paragraph 35 and the case‑law cited). Whereas the element ‘link’ may be descriptive per se in context with ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’, it was not contested that ‘link’ will be perceived by the relevant public as meaning ‘that which connects’, especially because financial services are usually provided by means of an electronic network connecting the various players and comprising subsequent connections.  However for the relevant consumers, namely all consumers in the United Kingdom, the purpose of the financial services were not to create and to maintain connections, but to enable  management of their financial resources, to dispose of them and to obtain information in relation thereto. Consequently, that public will not perceive the term ‘link’ as being directly descriptive of one of the aspects of the financial services, but at most as being allusive, given that communication links are used in the provision of those services.  Regarding the allegedly sceptical approach of the trade mark registration authorities in relation to the distinctive nature of the element ‘link’, it must be recalled, that OHIM and the Community judicature are not bound by decisions taken at Member State level, which may however be taken into consideration in the assessment of an application for registration of a Community trade mark (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 47, and Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 52). Similarly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a previous decision‑making practice of those boards (STREAMSERVE, paragraph 66).

According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and the case‑law cited). An element of a mark may be considered dominant if it is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 33). When assessing the dominant character of one or more components of a complex trade mark, account must be taken of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (MATRATZEN, paragraph 35). Regarding the existence of dominant elements in the conflicting signs the court found that the element ‘link’ was the only word element of the earlier mark, occupying a central position and representation in large characters. In addition, the figurative element, positioned to the right of the word element of the earlier mark, to which the applicant refers, represents, in a stylised manner, two intertwined circles forming a link. Accordingly, that element will be perceived by the relevant public only as an illustration of the conceptual content of the word element ‘link’. From this it was concluded, that the earlier mark was dominated by the element ‘link’. The court held the relevant English‑speaking public would break down the mark WORLDLINK into the elements ‘world’ and ‘link’, because they were common words in the English language.

Visually and phonetically, the weight of the element WORLD was considered greater than the weight of the word LINK, because according to the rules of English grammar the element ‘world’ will be perceived by the relevant consumers, on account of its position at the beginning, as an adjective meaning ‘global’ and qualifying the element ‘link’. Thus, the conceptual weight of the element ‘world’ will be less than that of the element ‘link’, since the first element is subordinate to the second one. Moreover, on account of its meaning, the element ‘world’ will be perceived as being descriptive of one aspect of the services covered, since financial services are often provided at a global level, whilst the element ‘link’ is at most allusive in relation to those services, as was found at paragraph 68 above. It follows that, conceptually, the element ‘link’ is significantly more important in the overall impression given by the mark applied for. However, its distinctive character is not sufficient to render the other element negligible, which means that it cannot be regarded as the dominant element of that mark. In the light of the foregoing the court noted that, visually and phonetically, the conflicting signs display a certain degree of similarity on account of their common element ‘link’. That finding is not called in question by the argument that the pronunciation of ‘worldlink’ places the stress on the first syllable. That fact is not such as to render the element ‘link’ imperceptible for the relevant consumer. However, the visual and phonetic similarity owing to the common element ‘link’ is weakened, without being completely neutralised, by the presence of the element ‘world’ positioned at the beginning of the mark applied for. Consequently, the signs at issue are slightly similar visually and phonetically. Conceptually, the earlier mark will be perceived by the relevant public as meaning a ‘link’, whilst the mark applied for will be perceived as meaning ‘global link’. Those two interpretations are very close in so far as they are based on the same concept and in so far as they are distinguished only by the addition of a geographical qualifier, which will be perceived as describing the fact that the relevant services are provided at a global level. The two marks at issue are therefore very similar conceptually. Given, first, their slight visual and phonetic similarity and, second, their strong conceptual similarity, the Board of Appeal did not err in finding in essence, that the signs at issue, assessed as a whole, display a certain degree of similarity.

 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or  from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHMI – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33, and PICARO, paragraphs 49 and 50 and the case‑law cited). In the present case, it follows from the examination carried out above that the relevant services are identical and that the signs at issue display a certain degree of similarity, since the mark applied for differs from the dominant element in the earlier mark only through the addition of an element which will be perceived by relevant consumers as a descriptive geographical qualifier. Accordingly, it must be held that there is a likelihood of confusion, notwithstanding the fact that the earlier mark is to a certain extent allusive. Although that fact means, as the applicant submits, that the intrinsic distinctive character of the earlier mark is limited, and although it is, consequently, likely to reduce that likelihood (see, to that effect, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24), it is not such as to preclude it in the circumstances of the present case.

Thus  the finding that there is a likelihood of confusion in the present case does not amount to conferring on the intervener a monopoly on the use of the element ‘link’. This case concerns only, first the earlier mark LiNK and the mark applied for WORLDLINK and, second, the services covered by those two marks. Given that the likelihood of confusion must be assessed by reference to all factors relevant to the circumstances of the case, the finding that there is a likelihood of confusion in this case does not prejudge the outcome of other cases involving other trade mark applications or other financial services. In the second place, it should be noted that, in its application, the applicant did not set out in detail the argument relating to the alleged peaceful coexistence between the earlier mark and the applicant’s national mark WORLDLINK, and nor did it submit to the Court evidence establishing, to the requisite standard, that coexistence. In addition, as OHIM stated, the peaceful coexistence of two marks may result from reasons other than the absence of likelihood of confusion between them (see, to that effect, Case T-31/03 Grupo Sada v OHMI – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86), which means that that fact is not such as to preclude, of itself, such a likelihood. Lastly, it must be pointed out that the applicant’s national mark WORLDLINK is registered for ‘electronic and paper‑based banking services, all relating to multi-currency payment systems’. Although those services fall within the category ‘financial affairs’ covered by the mark applied for and against which the opposition is directed, they are none the less considerably more specific than the services included in that category as a whole, since that category also includes services displaying different characteristics. Since those other services are not covered by the national mark WORLDLINK, the coexistence of that mark with the earlier mark is not relevant in itself for assessing, to the extent that those services are concerned, the likelihood of confusion between the mark applied for and the earlier mark.  In the third place, and lastly, the difference between the services covered by the mark applied for and those covered by the national mark WORLDLINK, established in the previous paragraph, renders irrelevant for this case the alleged position of the Trade Marks Registry in relation to that mark. In the light of all the foregoing, it must be held that the Board of Appeal did not err in finding that there is a likelihood of confusion between the mark applied for and the earlier mark.