In the recent decision of Gillette -v- LA-Laboratories Ltd OY, the European Court of Justice (ECJ) has provided some welcome guidance on when it is lawful for a company to use another brand owner's trade mark to refer to compatible accessories or spare parts e.g. a supplier of inkjet cartridges selling its goods as "Canon compatible cartridges". The key issue involved in this case was whether or not the statement that "All Parason Flexor and Gillette Sensor handles are compatible with this blade" infringed the Gillette trade mark.
In the UK, if a third party uses a registered trade mark in connection with goods identical to those for which that trade mark is registered, that third party is typically liable for trade mark infringement.
In the majority of cases where a third party is selling accessories or spare parts by reference to a trade mark owner's brand, they will try to rely on Section 10(6) of the Trade Marks Act, which states that a trade mark can be so used, provided that such use is "in accordance with honest practices in industrial commercial matters….[and does not] without due cause take unfair advantage of or is detrimental to, the distinctive character or repute of the trade mark."
In Gillette -v- LA-Laboratories Ltd OY, the ECJ decided that the following factors were relevant in determining whether use of a trade mark was "honest":
- the overall presentation of the third party product
- any effort made by the third party to distinguish its products from those of the trade mark owner
- whether the third party presented the product as being of the same quality as the trade mark owner.
The ECJ also deemed that use would not be honest if, for example:
- the use gave the impression of a commercial nexus between the third party and the trade mark owner
- the use discredited or denigrated the trade marked product
- the third party presented its product as an imitation or replica of the trade marked product.
Although this case does not provide any hard and fast guidelines, it does present practitioners with an idea of the view that may now be taken.
Brand owners could potentially stop the following activities by accessory/spare part sellers:
- using similar colours to those of the brand owner in advertising
- using any brand owner associated logo
- using any slogan commonly used by the brand owner e.g. selling razor blades as "Gillette compatible" using the wording "the best a man can get".
In our view, the key question to be asked by the Court is simple: is the third party accessory seller trying to indicate a connection with the brand, or is it simply using the brand to describe the compatibility of its product? If it is the former, there is a good chance that such behaviour can be stopped and that compensation can be obtained.
IMPORTANT This article is only intended as a general statement and no action should be taken in reliance on it without specific legal advice.