8th WIPO Advanced Research Forum on Intellectual Property Rights, WIPO- Geneva, May 26-28, 2014

The need for afair referential trademark use

from the perspective of users and civil society

Tomas Westenbroek MA LLMVrije Universiteit Amsterdam

!

What is the problem?

Permission?

As a parodist?

As a competitor on the same or adjacent

market?

Comparison

Spare parts

The problem is….

Freedom of expression

Freedom of competition

To Use or To Abuse?

(Nominative) Fair Use (US)

Limitations (EU)

EU Case Law

Categories of Use:

Decorative Use

Referential Use

Use as a Tradename

Use in Comparative (Keyword) Advertising

Where? Double identity protection

DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND

OF THE COUNCIL of 22 October 2008

2013/0089 (COD) COUNSIL EU, 12 May 2014

Article 5

Rights conferred by a trade mark

1. The registered trade mark shall confer on the proprietor

exclusive rights therein. The proprietor shall be 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;

Expanding view of TM use

The following, in particular, may be prohibited:

(a) affixing the sign to the goods or to the

packaging thereof;

(b) offering the goods, or putting them on the

market or stocking them for these purposes under that

sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the

sign;

(e) using the sign on business papers and in

advertising;

EASY USE?

(d) using the sign as a trade or company

name, [...] or as a domain name, or as a part

thereof;

(f) using the sign in comparative advertising in

a way which is contrary to Directive 2006/114/EC.

(!) Non exhaustive list (C-236/08 to C-238/08

Google/Vuitton, par 65)

Use in the course of trade: “commercial activity”

(C-236/08 to C-238/08 Google/Vuitton, par 50) ~

low threshold

The right place for referential trademark use in EU?

Art 5(1)(a) TMDir = ‘hardcore IP’ namely double identity-

protection against counterfeit

Never intended to be applicable in cases of referential use of

trade marks.

But: applied to decorative use (Opel/Autec), referential use

(BMW/Deenik), use as a tradename (Céline) and in

comparative (keyword) advertising (Google/Vuitton and M&S)

Interflora (!)

What about:

Fair use?

Descriptive use?

Another position, another point of view

™Use? (ECJ)

Other Use? (National

Law)

EU Limitation

Article 14 (NEW)

Limitation of the effects of a trade mark

1. The trade mark shall not entitle the proprietor to

prohibit a third party from using, in the course of trade:

(a) where the third party is a natural person, his own […]

[OPTION 1: first name and surname] [OPTION 2: surname]

or address;

(b) signs or indications which are not distinctive or which

concern 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;

EU Limitation

(c) the trade mark where that is necessary for the purpose of

identifying or referring to goods or services as those of the

proprietor of the trade mark, in particular […]to indicate the

intended purpose of a product or service, in particular as

accessories or spare parts.

2. Paragraph 1 shall only apply where the use made by

the third party is in accordance with honest practices in

industrial or commercial matters. The use by the third party

shall be considered not to be in accordance with honest

practices in particular in the following cases:

Even more limited….

(a) it gives the impression that there is a commercial

connection between the third party and the proprietor of the

trade mark;

(b) it takes unfair advantage of or is detrimental to, the

distinctive character or the repute of the trade mark without

due cause.

Another way out?

5(5) TMDir:

“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.

Benelux Convention on Intellectual Property (BCIP)

Another way out?

Article 2.20 BCIP Scope of protection

1. A registered trademark shall provide its holder with an

exclusive right (…) shall permit its holder to prohibit any third

party, without its consent, from: (…)

d. using a sign for purposes other than those of distinguishing

the goods or services, where use of the sign without due

cause would take unfair advantage of or be detrimental to the

distinctive character or the repute of the trademark.

What’s the point?

Within or outside the scope of the European harmonized

trademark system?

Territoriality argument

Markets or market

European trademarks vs National trademarks

What’s the point?

Legal security argument

Is there such a thing as European humour?

Other use (!)

Or do we want a European fair use catalogue?

What about a mandatory 5(5) ‘Benelux’ provision?

Fair use ~ Due cause

FAIR USE: burden of proof?!

Prohibition of:

d. using a sign for purposes other than those of distinguishing

the goods or services, where use of the sign without due

cause would take unfair advantage of or be detrimental to the

distinctive character or the repute of the trademark.

Or:

Allowance of:

d. using a sign for referential purposes unless no fair use is

being made of the sign and the holder has a legitimate

reason to oppose the use of that sign.

The right place for referential trademark use!

No more defragmented case-law from ECJ

A hold to the ‘stretching’ of the concepts of ‘use’ and

‘trademark use’

Art 5(1)(a) TMDir to be applied as intended (anti-

counterfeiting)

Art 5(5) The ‘right place’ for the development of a European

fair referential use catalogue?

More case-by-case ‘fair use’ law without a huge impact on

the trademark system as a whole

Another position, another point of view

END……or the beginning?