This European Court of Justice (ECJ) decision has made it more difficult for trade mark owners to prevent third parties from referring to their trade marks if such endorsement is ‘honest’.
Gillette had sought an injunction in Finland to stop LA-Laboratories from selling its rival 'Parason Flexor' razor brand with a label saying "All Parason Flexor and all Gillette Sensor handles are compatible with this blade". Gillette argued that this constituted an infringement of the registered trade marks GILLETTE and SENSOR. The case was referred to the ECJ by the Supreme Court of Finland, which sought clarification on the interpretation of Article 6(1)(c) of the Trade Marks Directive (Directive 89/104/EEC), which states that a third party may refer to another’s trade mark if it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.
The ECJ held that ‘honest use’ within the meaning of Art.6(1)(c) of the Trade Mark Directive constituted in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. The use of the trade mark would not be in accordance with honest practices in industrial and commercial matters if, for example:
(i) it was done in such a manner as to give the impression that there was a commercial connection between the third party and the trade mark owner;
(ii) it affected the value of the trade mark by taking unfair advantage of its distinctive character or repute;
(iii) it entailed the discrediting or denigration of that mark; or
(iv) where the third party presented its product as an imitation or replica of the product bearing the trade mark of which it was not the owner.
The fact that a third party used a trade mark of which it was not the owner in order to indicate the intended purpose of the product, which it marketed did not necessarily mean that it was presenting it as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark. Where the third party marketed not only a spare part or an accessory but also the product itself with which the spare part or accessory was intended to be used, such use fell within the scope of Article 6(1)(c) in so far as it was necessary to indicate the intended purpose of the product marketed and was made in accordance with honest practices in industrial and commercial matters.
This case clarifies the concept of "honest trade mark use" and seems to be consistent with previous ECJ case law on this subject. This decision is largely based on the BMW v Deenik case (C-63/97), which found that the use of a third party’s trade mark to inform the public that the advertiser is a specialist in the products marketed under the trade mark is necessary to preserve a system of undistorted competition.
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