On 11 September 2007, the European Court of Justice (ECJ)
delivered a preliminary ruling regarding the interpretation of
Article 5(1) of the Trade Mark Directive in relation to the
right of the owner of a registered trade mark to prevent a
third party from using a company name which is identical to its
sign. The question of interpretation had been raised in an
infringement action brought by Celine SA against Celine SARL
for the use by Celine SARL of the company name Celine.
According to Article 5(1) of the Directive, the owner of a
registered trade mark is entitled to prevent any third party
from using a sign provided that the four following conditions
are met: (i) the use made by a third party must be made in the
course of trade; (ii) it must be without the consent of the
trade mark owner; (iii) it must be in respect of goods or
services which are identical to those for which the trade mark
is registered; and (iv) it must affect, or be liable to affect,
the functions of the trade mark, in particular its essential
function of guaranteeing the origin of the goods or services to
In its decision, the ECJ stated that the purpose of a
company name is not of itself to distinguish goods and
services. A company name may therefore be used without it
infringing a trade mark right, as long as such use is limited
to identifying the company.
The ECJ also ruled that the use of a company name may be
prohibited when this use is "in relation to goods in
such a way as to affect or to be liable to affect the functions
of the mark". This would apply if the sign was fixed
onto the goods marketed by the company name's owner, or if
it was used in such a way that a link is established between
the company name and the trade mark owner's goods or
The French courts will have to adapt their case law in light
of this decision. Up until now, they had mostly regarded the
use of an identical company name as being per se an
infringement of a trade mark right. As a result, the plaintiff
will now have to prove that the company name is used "in
relation to goods or services".
Despite its ruling, the ECJ has not defined the kind of link
that must be proven to exist between the trade mark owner and
the company using the trade mark as its name. A broad
interpretation of such a link by the French courts might uphold
the current French case law. As a general point, the link would
probably be more easily proven if the trade mark at stake is
very distinctive or famous.
The ECJ's decision also raises questions about the
nature of company names within the context of intellectual
property law. Article L.711-4 of the French Intellectual
Property Code defines the corporate name as a prior right
preventing the registration of a trade mark. It will be
interesting to see how the courts will explain that a company
name constitutes per se a prior right, but still infringes a
trade mark if it is used "in relation to goods or
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Victoria Plumbing had been using VICTORIAN PLUMBING in parallel to Victoria Plum's use of VICTORIA PLUMB, for 15 years. Both parties had been using their respective marks for retail of bathroom products.
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