• UE Fair use criteria and trademark infringement

    UE Fair use criteria and trademark infringement


    <?xml:namespace prefix = o ns = "urn:schemas-microsoft-com:office:office" /><o:p> </o:p>Céline SA, a famous clothing company, owner of trademark CELINE, sued Company Céline SARL, incorporated for a clothes confectionery activity, and won in first instance before French Courts.

    <o:p> </o:p>A recourse was filed and the French Court of Appeal decided to question the ECJ on trademark infringement asking whether the adoption, by a third party without authorisation, of a registered word mark, as a company, trade or shop name in connection with the marketing of identical goods, amounts to use of that mark in the course of trade which the proprietor is entitled to stop.

    <o:p> </o:p>Although the principle is a trademark owner has an exclusive right, two main points need to be detailed: is there an illegal use if the sign, used as a company name, is not appended on identical goods or services of the company? Is there an illegal use if only a link may be established between the company name and the identical goods and services it distributes?

    <o:p> </o:p>The ECJ replied positively to the second question, avoiding the fact that the sign is not appended on the goods and services, and ruling that the “unauthorised use by a third party of a company name, trade name or shop name which is identical to an earlier mark in connection with the marketing of goods which are identical to those in relation to which that mark was registered constitutes use which the proprietor of that mark is entitled to prevent in accordance with Article 5(1)(a) of the directive, where the use is in relation to goods in such a way as to affect or be liable to affect the functions of the mark.

    <o:p> </o:p>In fact, the ECJ pointed out that a connection with the marketing of identical goods is sufficient. Nevertheless, the ECJ ad that  it  may be legal if the use is in accordance with honest practices in industrial or commercial matters (see: ECJ C-228/03 March 17/2005), seeming to confirm his ruling through this way.

    <o:p> </o:p>In conclusion, we have the view that the decision is concordant with the spirit of the trademark law continuing to offer a protection to trademark owners against competitors without prior rights in their relevant market; moreover using the above cited UE “fair use criteria” already well established in caselaws.
    <o:p> </o:p>

    Romain BUSNEL
    IP LAWYER


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