On 6 February 2014, the Court of Justice of the European Union (the "ECJ") handed down a preliminary ruling on the "due cause" which may shield a third party against an alleged illegitimate use of a reputable trade mark. In its judgment, the ECJ largely followed the opinion of the Advocate General Kokott of 21 March 2013 (see, VBB on Belgian Business Law, Volume 2013, no. 4, p. 10, available at www.vbb.com).
Article 5 (2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (the "Trade Mark Directive"), essentially reproducing Article 5 (2) of the former Directive 89/104, provides the following:
"Any Member State may [...] provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
The dispute in the main proceedings arose between Red Bull and Mr. de Vries in relation to the interpretation of the concept of "due cause". Red Bull has been the owner of a word and figurative trade mark for the sign "Red Bull Krating-Daeng", registered for alcohol-free drinks since 11 July 1983 and enjoying a reputation in the Netherlands. Mr. de Vries owns the word and figurative trade marks "The Bulldog" registered on 14 July 1983 for hotel, restaurant and café services involving the sale of drinks. Mr. de Vries had already been using the "The Bulldog" sign before Red Bull filed its registration. In 1997, Mr. de Vries also started using the trade mark for energy drinks. Red Bull then tried to prevent Mr. de Vries from manufacturing and selling his energy drink with the mark "The Bulldog" because of its similarity with the mark "Red Bull" which could allegedly cause confusion for consumers. The Dutch Supreme Court referred the question for a preliminary ruling to the ECJ asking whether use for "due cause" of the sign by a third party in the meaning of Article 5(2) of the Trade Mark Directive may be demonstrated by the fact that the sign had been used before the trade mark was filed.
According to the ECJ, "the concept of 'due cause' may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation". The ECJ considered the situation where a third party used a sign (i.c., "The Bulldog") similar to a trade mark (i.c., "Red Bull") in relation to goods which are identical to those for which that mark is registered and the sign had been used by the third party before the trade mark was registered and the later registered trade mark acquired a reputation. In such a situation, the ECJ considered that whether the third party can rely on "due cause" depends on three factors.
First, it should be determined how Bulldog's sign has been accepted by, and what its reputation is with, the relevant public.
Second, the national court should assess the degree of proximity between the goods and services for which "The Bulldog" sign had been originally used and the product for which the "Red Bull" mark with a reputation was registered. In this regard, the ECJ noted that, where a sign has been used prior to the registration of a mark with reputation, the extension of such a use may be a natural extension of the range of services and goods for which that sign already enjoys a certain reputation with the relevant public. In the present case, the ECJ considered that the sale of energy drinks displaying the sign "The Bulldog" does not appear to be an attempt to take advantage of the mark "Red Bull", but rather a genuine extension of the range of goods and services already offered by Mr. de Vries, i.e. the sale of drinks.
Third, the national court should take into account the economic and commercial significance of the use for that product of the similar sign (i.c., "The Bulldog").
The ECJ remarked that the greater the repute of "The Bulldog" sign prior the registration of the "Red Bull" mark, the more the use of "The Bulldog" as a sign will be necessary for the marketing of a product identical to that for which the "Red Bull" mark was registered since that product is close to the range of goods and services for which "The Bulldog" sign had been previously used.
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