Gerolsteiner, Kerry Jump Too The Watering Downward Of A German Merchandise Mark

At the monthly IP Chat, hosted yesteryear Ilanah together with Jeremy at the Queen Mary Intellectual Property Research Institute, approximately interesting points cropped upward concerning the ECJ conclusion inward Case C-100/02 Gerolsteiner Brunnen 5 Putsch (blogged yesteryear the IPKat on viii January). In Gerolsteiner the ECJ held that the work of a term of geographical rootage (KERRY SPRING) did non infringe the High German GERRI merchandise grade for the same goods if it was "in accordance amongst honest practices", fifty-fifty if the work of that term (i) was a work equally a merchandise grade together with non equally a mere descriptor together with (ii) that work was probable to travail confusion.

The interesting signal is this: the ECJ (at para.16 of its judgment) says that "Art.6 [of Council Directive 89/104, the provision which contains the "honest use" defence] seeks to reconcile the fundamental interests of merchandise grade protection with those of free displace of goods ... inward the mutual marketplace inward such a agency that merchandise grade rights are able to fulfil their essential role inward the arrangement of undistorted contest which the [EU] Treaty seeks to institute together with maintain". But how tin this balancing human activeness hold out done? If High German consumers are going to hold out confused betwixt ii dissimilar products bearing similar merchandise marks, the before High German grade is incapable of fulfilling its essential function of identifying the rootage of its owner's goods.

There seems to hold out a pendulum resultant at work. In HAG I the ECJ's conclusion had the resultant that gratis displace of goods overrode the merchandise mark's essential function. In HAG II the ECJ reversed its position together with said that the essential business office was entitled to protection fifty-fifty if it meant restricting that gratis displace of goods. Now inward Gerolsteiner we bring swung to the opposite extreme again.

The role played yesteryear honesty inward the Art.6 defense forcefulness is besides opened upward to question. Whether the importation into Deutschland together with subsequent sale of KERRY SPRING is an "honest use" or non is a affair of no describe of piece of work organisation to the High German consumer, who volition hold out only equally confused yesteryear similar marks where the work of the later on grade is honest equally where it is dishonest. It is slow to imagine a scenario inward which an honest work of this nature volition destroy the before grade inward its entirety, where the honest invader is a well-resourced big build competing amongst a pocket-size national brand.

The Gerolsteiner decision appears to hold out unobjectionable inward itself. The top dog job is inward the mode inward which the ECJ seeks to couch the justification of its decision.

For an explanation of HAG I together with HAG II click here
More on Kerry Spring here together with here
Gerri together with nutrition here and here; Geri here