A recent case before the European Court of Justice has gone some way to clearing the air on a concerning question for trade mark practitioners. A recent judgment in favour of Davidoff has closed a gap in the law that allowed parody products to infringe trade marks.
The presence of parody products is a headache for many brand owners. A good example of a parody product is a cheaper version of a popular aftershave or perfume, which goes under a similar name to the original brand name scent. Often, the purchasing public knows perfectly well that the source of the goods is not the same source as the original, so there is no confusion, but the goods in question are still very similar. How does the Davidoff case change things?
Under the Trade Marks Directive, there are three ways to infringe a registered trade mark. They are as follows:
1. If the sign is the same as the registered trade mark and the goods for which the trade mark are registered are the same as those on which that sign is used. There is no need to show confusion as it is assumed.
2. If the sign is the same (or similar) to the registered trade mark and the goods or services that that sign is used in are the same (or similar) and if you can provide evidence that there is a likelihood of confusion between the two.
3. If the sign is the same (or similar) to a registered trade mark with a reputation and the goods or services that that sign is used on are not similar and the use of the mark takes unfair advantage, or is detrimental to the distinctive character or repute of the trade mark.
These guidelines show that although the protection offered to a registered trade mark is becoming progressively wider, there are additional hurdles to be crossed in order to succeed in an infringement action. Hence the tests for likelihood of confusion in (2) and the need to show that a mark genuinely has a reputation.
But before the Davidoff case, it had been thought that there was a gap in the protection offered to registered trade marks.
Imagine that you are the owner of a trade mark with a reputation, and you discover that a third party is using a motif that is the same as (or similar to) your trade mark on goods – and additionally, the goods are also similar to those for which the trade mark is registered. If it is obvious that there is no confusion, you would have no protection under (2) above. Traditionally it was also thought that you would have no protection under (3) because the goods are not similar.
In effect, you - the brand and trade mark owner - would have no protection at all.
Davidoff & Cie SA and Zino Davidoff SA are famous for their 'Davidoff’ range of products. They have a trade mark registration for the word Davidoff in a particular font covering jewellery and other goods such as tobacco.
The defendant in this case was a company based in Hong Kong, called Gofkin Limited, which had registered a trade mark for the word 'Durffee' in a very similar font to that used by Davidoff and registered in relation to similar goods to the Davidoff registration. Davidoff had tried to prevent the registration of these marks but the company had not been successful. So Davidoff then sued Gofkin in Germany for registered trade mark infringement of the 'Davidoff trade mark.
Davidoff claimed that the adoption of the same font (in particular the "D" and the "ff" were very similar), coupled with the fact that the defendant's products were perceived to be of a cheaper quality, would be detrimental to Davidoff s own registered trade marks. The one problem was that there was little evidence of confusion and so it had difficulties relying on the ground of infringement in (2) above. Would Davidoff be left without protection?
Davidoff argued that it should be able to rely upon (3) even though the goods were the same and the directive appeared to make it clear that the goods should be "not similar".
In a surprising result, the European Court of Justice agreed that a trade mark owner with a mark with a reputation should not be in a worse position because the goods were similar, compared to when they are not similar. This would not achieve the purpose of the directive and therefore they interpreted the wording broadly.
Although the European Court's judgment strains the concept of interpretation to its maximum, the result is sensible. To the extent that there was a gap, it has been closed. The effect of the judgment is also to extend the concept of 'brand dilution' to where the use of a similar sign on similar goods damages the reputation of a registered trade mark.
- There are now a number of ways in which a registered trade mark can be infringed, not just those mentioned above.
- It was thought that where a registered trade mark with a reputation was used on similar goods and there was no confusion as to the origin of the goods, the trade mark owner could not do anything.
- This judgment has the effect of allowing a trade mark owner to restrain that activity.
- This may be of use in a situation where a trade mark owners goods are being parodied.
First published in Brand Strategy in March 2003.
Important - The information in this article is provided subject to the disclaimer
. The law may have changed since first publication and the reader is cautioned accordingly.