L'Oral v Bellure
Trade Marks with a reputation – 'free-riding'

UK

L'Oral SA v Bellure NV (C-487/07). 18 June 2009 (Reference from the English Court of Appeal to the Court of Justice of the European Union ("CJ") and Judgment of Court of Appeal, reluctantly following CJ 21 May 2010)

Audrey Horton, London

The L'Oral case concerned so-called "smell-alike" or imitation perfumes and the use of well-known registered marks in price and smell comparison charts.  The case also involved infringement under Article 5 (2) of the Trade Marks Directive of L'Oral's registered marks for bottle shapes and packaging in respect of the defendant's look-alike packaging (which did not incorporate L'Oral's word marks).  The defendants were using the registered trade marks for the purposes of comparing the characteristics, in particular the smell of the goods, in such a way that it did not cause confusion, did not impair sales under the well-known mark, did not jeopardise the essential function of the trade mark as a guarantee of origin, and did not tarnish or blur the registered trade mark.  The question was whether this could still amount to the taking of "an unfair advantage". 

Finland

Trade marks with reputation in Finland – analysis of recent case law

Ella Mikkola and Topi Lusenius, Helsinki
There have been some Finnish cases regarding trade marks with a reputation. In Arla Ingman v Valio (KKO 2010:12; 19 February 2010) the Finnish Supreme Court ruled that Arla Ingman's trade mark INGMARIINI does not infringe Valio's trade marks VOIMARIINI, OIVARIINI and MARIINI. The criteria relating to unfair advantage were addressed in more detail by the Helsinki District Court in Nokian Tyres v Verkkokauppa.com (no 20036; 16 June 2009), in a judgment handed down only two days prior to L'Oral v Bellure.  

Sweden

The Swedish application of L'Oral v Bellure

Sara Sparring and Per Svanteson, Stockholm
The L'Oral case has not yet been cited by Swedish Courts in trade mark matters, but a principle similar to the free-riding principle has for many years been applied by the Swedish Market Court on matters regarding unfair marketing.  According to this Market Court principle, a third party may not free-ride on the "attention value" of a brand regardless of whether there is any risk of confusion among the public or not concerning the commercial origin. 

Singapore

Protection of well known trade marks in Singapore

Karol Goh, Singapore
On 31 March 2009, the Singapore Court of Appeal issued, in deciding whether a modest cluster housing project in Singapore should be allowed to use the same name as an exclusive luxury resort in Bali, a landmark decision on the protection of well known trade marks in Singapore. In Novelty Pte Ltd v Amanresorts Ltd [2009] SGCA 13, the Court of Appeal considered, for the first time, Section 55 of the Trade Marks Act, the relevant provision affording a well known trade mark proprietor a statutory right to an injunction to restrain use of its well known trade mark.

Trade Marks and the Internet

Keywords and sponsored links

Belgium

The Brussels Court of Appeal ruling of 11 February 2009 in the Polo Ralph Lauren v eBay case in the light of CJ Judgment of 23 March 2010 in joined cases Google v Louis Vuitton

Laurent Masson, Brussels

The Court of Appeal of Brussels considered the position of re-sellers or intermediaries such as eBay, in its judgment of 11 February 2009, namely whether eBay infringed The Polo/Lauren Company's trade mark rights by using the latter's well-known trade marks "Ralph Lauren" and "Polo Sport" in relation to Google AdWords ads, in order to attract consumers to its fashion area. The Court held that because eBay buys as AdWords keywords consisting of well-known trade marks (such as "Ralph Lauren" and "Polo Sport") it cannot be deduced that eBay intends to advertise its own online marketplace by using the advertising function of these trade marks.

Spain

The liability of service providers in the information society. Reflections about the Judgment of the European Court of Justice delivered on 23 March 2010 in joined cases C-236 to 238 /08 Google v Louis Vuitton and others before the CJ (formerly ECJ)
Fidel Porcuna de la Rosa, Madrid
The liability of the company Google France as provider of data storage services online is analysed in the recent Judgment of the CJ in cases C-236/08, C-237/08 and C-238/08. These matters deal with the requests for a preliminary ruling submitted by the French Cour de Cassation in three proceedings between the company Google Inc. (or its French subsidiary Google France SARL), against the purse manufacturer Louis Vuitton Malletier SA, against the company Viaticum SA and Luteciel SA and against the Centre National de Recherche en Relations Humaines SARL (CNRRH) and its trade mark licensee. These companies complained about the advertising system called Google AdwordsTM on which the links sponsored by Google were based. 

Poland

Trade marks and meta tags – fair use or unfair competition?

Piotr Dynowski, Warsaw
In October 2009 the Court for the Community Trade Marks and Community Designs in Warsaw issued a ground breaking milestone judgment in a case concerning use of third party trade marks in a website's meta tags in order to improve positioning in search results in some search engines (XXII GWzt 8/09). This is the first judgment in Poland that concerns use of third party trade marks as meta tags and analyses the issue both from the trade mark law and unfair competition perspective.

Italy

Google "AdWords" system and registered trade marks
Fulvio Mellucci, Milan 
An interesting decision was issued by the Court of Milan on 11 March 2009 concerning "AdWords", the well known Google advertising system. Two companies active in the field of car hire [Avis] established that entering the "Avis" keyword (their registered trade mark) into Google's search engine triggered the display of a link to the website of some competitors under the heading "sponsored links". In other words, these companies had activated the "AdWords" service, "purchasing" the word "Avis" as a keyword.  Avis therefore sued these competitors for inter alia acts of unfair competition and trade mark infringement.

Aspects of Trade Mark Use

Genuine Use

France

Genuine use
Benedikte Hattier, Paris
Applying the CJ decision in Radetsky (C442/07), (concerning charitable use by a non-profit-making organisation) on 10 April 2009, the Court of Appeal of Paris (Mdecins sans Frontires v Autistes sans Frontires) decided that the genuine use of the trade mark "MEDECINS SANS FRONTIERES" in relation to humanitarian services was evidenced by the distribution of advertising materials.

Germany

Genuine use: the decision of the German Federal Supreme Court (BGH) in the proceedings of Opel / Autec

Joseph Fesenmair, Munich
The German Federal Supreme Court (BGH) handed down its decision in Opel-Blitz II on 14 January 2010 following the reference to the CJ for a preliminary ruling Adam Open/Autec (C48/05). The BGH decided that a car manufacturer cannot rely on its trade mark rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space.

Aspects of Trade Mark Use

Use "in the Community"

The Netherlands

The Onel case: Benelux Office for Intellectual Property ruling on genuine use of a community trade mark
Manon Rieger-Jansen, The Hague

On 15 January 2010 the Benelux Office for Intellectual Property has rendered an important but controversial decision regarding the question whether use of a trade mark in one EU Member State could be considered genuine use of a Community Trade mark. 

Hungary

Requirement of genuine use of a Community Trade Mark – the Hungarian Patent Office speaks out 

Balint Halasz, Budapest
In the CITY INN case the Hungarian Patent Office ("HPO") supported the decision of the Benelux Office for Intellectual Property ("BOIP") in the ONEL/OMEL opposition case, in which BOIP stated that the use of a Community trade mark in one single Member State does not qualify as genuine use.  

Germany

Trade mark with a reputation in the Community – Geographical extent of the reputation
Joseph Fesenmair, Munich
In Pago / Tirolmilch (Case C-301/07) the CJ has explained the meaning of the phrase "reputation in the Community" in the context of Article 9(1) (c) of Council Regulation (EC). 

China / Hong Kong

China: Trade mark use re-defined?

Ai-Leen Lim, Hong Kong
In a recent decision Shanghai Shenda Sound Electronics Co. Limited v Jiulide Electronics (Shanghai) Limited [2009], the Shanghai People's High Court upheld the decision made by the Shanghai Intermediate Court in finding that pure OEM activities which involved the affixing of trade marks which were not owned by the manufacturer did not amount to trade mark infringement.  

New Trade Mark Laws in Central Europe

Czech Republic

Trade mark law in the Czech Republic

Andrea Jarolimkova and Vojtech Chloupek, Prague
The legal protection of trade marks in the Czech Republic is governed by two pieces of legislation – Act No. 441/2003 Coll., on Trade Marks ("Trade Marks Act") and Act No. 221/2006 Coll., on the Enforcement of Industrial Property Rights ("IP Enforcement Act"). Both of these acts implement the relevant European Community law.

Slovakia

A new Trade Marks Act for Slovakia 

Anna Galisinova and Anton Konkol, Bratislava
On 28 October 2009 the Slovak Parliament adopted the Act No. 506/2009 Coll. on Trademarks ("New Act"). The New Act came into effect on 1 January 2010 and replaced the Act No. 55/1997 Coll. on Trademarks ("Old Act"). Although the Old Act complied with Community law, the New Act was necessary in order to implement the relevant EC Directives more precisely.  In comparison to the Old Act, the New Act uses better terminology and has a clearer structure. 

Bird & Bird News 

Brand Management Services

Bird & Bird has recently re-organised their IP & Commercial offering with the development of a new Brand Management Service group.

Formed by the firm's brand specialists the service helps clients protect and promote their brands in the marketplace.  Our Brand Management service offers a complete package from clearance searches and trade mark prosecution through to brand licensing and enforcement.

The development and protection of your trade mark portfolio requires a range of legal skills including expertise in trade mark prosecution, contractual negotiation, due diligence and litigation. For most large portfolios this breadth of legal expertise is needed on an international basis.   Bird & Bird is uniquely placed to provide its clients with this range of services. It has 21 offices covering 15 jurisdictions and has one of the largest IP advisory and litigation Groups in Europe and Asia.

For more information on this new offering please contact Peter Brownlow - peter.brownlow@twobirds.com or Uwe Lken - uwe.lueken@twobirds.com.   

Expansion in Asia 

In 2009 we entered into a global association in Singapore with ATMD Bird & Bird LLP, one of Singapore's leading law firms and Chinese (domestic) law firm Xiang Kun.  Through the association with Xiang Kun we can further assist clients in contentious matters in China by undertaking advocacy in the Chinese Courts.