EU TRADEMARKS
the sign is used may be perceived by the third party in such a way that the trademark’s power of attraction is reduced, in particular when those goods possess a characteristic or quality which is liable to have a negative impact on the image of the mark (“tarnishment”); and
c) Unfair advantage affecting the distinctive character or reputation of the mark, also referred to as ‘parasitism’ or ‘free-riding’, which relates not to the detriment caused to the mark but to the advantage afforded the third party. It covers cases where, by reason of a transfer of image of the mark or of the characteristics which it protects to the goods identified by the identical or similar sign, there is “clear exploitation on the coat-tails of the mark with a reputation”.
Any one of those suffices for trademark infringement to be established. Te CJEU confirmed that the trademark owner is not required to prove actual and present injury, but merely a serious risk thereof, which is not hypothetical.
Te above was confirmed in the subsequent CJEU ruling C-323/09 of 22.9.2011 Interflora Inc, Interflora British Unit v Marks & Spencer plc, Flowers Direct Online Ltd. Te court also made reference to a “new” trademark function, namely the “investment function” without presenting any elements that would constitute this function as something different from advertising.
C-100/11 P of 10.5.2012 Helena Rubinstein, L’Oréal SA v Office for Harmonization in the Internal Market (Trade Marks and Designs), Allergan Inc
In this case the CJEU considered the case on appeal and confirmed that the risk of dilution must be based on logical deductions made from an analysis of probabilities and normal practice in the relevant commercial sector. Aſter confirming similarity of marks and similarity of goods, the court confirmed that there was a link established by consumers and that the disputed marks sought to take advantage of the distinctive character and reputation of the earlier famous marks (parasitic intent). Decisive in this ruling appeared to be the fact that the owners of the disputed marks had acknowledged at the hearing before the general court that they intended to take advantage of the image which was associated with that product under the earlier mark.
Implications for national legal practice
Many years aſter the entry into force of the first trademark directive (89/104/EEC) the CJEU
100 World Intellectual Property Review Annual 2013 finally recognised the protection of famous
marks in the EU against dilution and established guidelines for its application. Certain issues remain unclear, such as the issue of proving (risk of) dilution by blurring. Te change in the economic behaviour of consumers, suggested by the CJEU, would not be a practical criterion, as economic behaviour changes (assuming that by this the CJEU means a decrease in sales) might not even occur in a dilution case (usually the sales do not decrease because of a third party’s unauthorised use) and if they occur, they might be causally linked with a number of different factors totally unrelated to third party use (eg, the global financial crisis).
However, the aforementioned case law has helped national courts give life to the respective provisions of
the directive protection of famous marks.
It appears that most national courts in the EU would be relatively familiar with free-riding cases drawing upon their legal traditions on unfair competition or passing off. However, dilution by blurring still remains difficult to establish and prove. It remains to be seen how the CJEU guidelines will be applied by national courts and/or be further clarified by the CJEU.
Marina Perraki is a partner at Tsibanoulis & Partners Law Firm. She can be contacted at
m.perraki@
tsibanoulis.gr
and expand the
Marina Perraki has a PhD in trademark law from Queen Mary, University of London, UK. She has been practising intellectual property law for more than 15 years and has extensive experience in IP and unfair competition law counselling and litigation.
www.worldipreview.com
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