Originally published January 2004
The European Court of Justice ("ECJ") has confirmed that the mere existence of a likelihood of aural confusion between a registered trade mark and a later indication of geographical origin does not entitle the trade mark owner to prevent the later use unless the later use is not in accordance with honest practices.
Background
The case concerns the correct interpretation of Art. 6(1)(b) of the EC Trade Marks Directive (Case C-100/02, Gerolsteiner Brunnen GmbH & Co v Putsch GmbH.)
By way of background, Art. 6(1)(b) states:
"1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,
…(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; ……
provided he uses them in accordance with honest practices in industrial or commercial matters".
Gerolsteiner Brunnen ("GB") bottles and markets in Germany mineral water and soft drink products with a mineral water base. It is the proprietor of the word mark GERRI (priority date 21 December 1985) registered in Germany in respect of non-alcoholic drinks.
Since the mid-1990s, Putsch ("P") has marketed soft drinks in Germany branded KERRY Spring. These drinks are manufactured and bottled in County Kerry, Ireland, by an Irish company called Kerry Spring Water and using water from a spring called Kerry Spring. GB sued P for infringement of its German trade mark rights. The Munich Regional Court of first instance found in favour of GB however, on appeal, the Munich Higher Regional Court dismissed GB’s claim. GB brought an appeal on a point of law before the German Federal Court of Justice on the interpretation of Art 6(1)(b). That court referred the following questions to the ECJ:
- Is Art 6 (1)(b) applicable if a third party uses the geographical indication as a trade mark?
- If so, must such use as a trade mark be taken into account when considering whether use has been in accordance with honest practices in industrial or commercial matters?
Outcome
An earlier draft of what is now Art 6(1)(b) stated that the limitation to infringement in that Article applied where the third party did not use the indication as a trade mark. This was subsequently amended to add the proviso that the use must be "in accordance with honest practices in industrial or commercial matters". The ECJ stated that no distinctions are made between the possible uses of the indications referred to in Art 6(1)(b): for an indication to fall within Art 6(1)(b) it is sufficient that it concerns one of the characteristics set out there, for example geographical origin.
In this case, GERRI does not have a geographical connotation whereas KERRY Spring refers to the geographical origin of the water, where the product is made and bottled and also where the producer is established.
The German Federal Court of Justice had already stated that there is a likelihood of aural confusion for the purposes of Art 5(1)(b) between GERRI and KERRY Spring. The question was whether this likelihood of aural confusion between a word mark and an indication of geographical origin entitled GB to rely on Art 5(1)(b) to prevent P from using KERRY Spring as an indication of geographical origin.
In its judgment, the ECJ stated that the only issue was whether the indication of geographical origin is used in accordance with honest practices in industrial or commercial matters. That is, is the third party acting fairly in relation to the legitimate interests of the trade mark owner? Where there is a likelihood of aural confusion between a word mark registered in one Member State and an indication, of geographical origin used for a product from another Member State, the proprietor of the trade mark may, pursuant to Art 5, prevent the use of the indication of geographical origin but only if that use is not in accordance with honest practices in industrial or commercial matters. It is for national courts to assess on the particular facts whether use is in accordance with honest practices in each case.
Comment
As the EEA expands, the likelihood of existence of marks registered in one Member State being phonetically similar to indications of geographical origin from another Member State is significant. Conflicts of this nature will therefore continue to occur.
This judgment highlights the practical difficulty for trade mark practitioners providing clearance opinions in respect of both registrability of marks and possible infringement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
