The European Court of Justice gave its ruling today inwards
Case C-228/03 The Gillette Company together with Gillette Group Republic of Finland Oy v LA-Laboratories Ltd Oy, a asking for a preliminary ruling from Finland.
The factsGillette registered inwards Republic of Finland the merchandise marks GILLETTE together with SENSOR for "hand tools together with implements (hand-operated); cutlery; side arms; razors" (Class 8) and, through its exclusive licensee, sold razors inwards that country, especially razors composed of a handgrip together with a replaceable blade together with such blades on their own. LA‑Laboratories also sold inwards Republic of Finland razors that were composed of a handgrip together with a replaceable blade together with blades on their own, similar to those marketed past times Gillette. Those blades were sold nether the grade PARASON FLEXOR; fixed to their packaging was a sticker alongside the words "All Parason Flexor together with Gillette Sensor handles are compatible alongside this blade". LA‑Laboratories was non authorised past times a merchandise grade licence or whatever other contract to utilisation Gillette's marks. Gillette sued for merchandise grade infringement, arguing that the practices of LA‑Laboratories created a link inwards the heed of consumers betwixt its products together with those of Gillette, or gave the imitation impression that that fellowship was authorised, past times virtue of a licence or for unopen to other reason, to utilisation the GILLETTE together with SENSOR marks.
In its judgment the Helsingin käräjäoikeus held that Gillette had the exclusive correct to affix its marks to those products together with their packaging, together with to utilisation those marks inwards advertising. Accordingly, past times mentioning those marks inwards an eye-catching way on the packaging of its products, LA‑Laboratories had infringed that exclusive right. The Helsingin käräjäoikeus farther held that Article 4(2) of the Finnish merchandise grade law, which provided for an exception to that regulation of exclusivity, must endure interpreted narrowly inwards the low-cal of
Article 6(1)(c) of Directive 89/104. In its view, that provision did non relate to the essential parts of a production but exclusively to spare parts, accessories together with other similar parts which were compatible alongside the manufactured production or marketed past times unopen to other person. That courtroom held that both the handgrip together with the blade were to endure regarded every bit essential parts of the razor together with non every bit spare parts or accessories. It thus held that the exception nether Article 4(2) of the Finnish constabulary did non apply together with that LA‑Laboratories had infringed Gillette's marks.
LA‑Laboratories appealed to the Helsingin hovioikeus (Court of Appeal of Helsinki), which held that, where a razor of the type currently at resultant was composed of a handgrip together with a blade, the consumer could supersede that latter component subdivision past times a novel blade, sold separately. The latter, beingness inwards commutation for a one-time component subdivision of the razor, could thus endure regarded every bit a spare component subdivision inside the pregnant of Article 4(2) of the tavaramerkkilaki. Secondly, the indication on the sticker affixed to the packaging of the razor blades marketed past times LA‑Laboratories could endure useful to the consumer. LA‑Laboratories mightiness thus endure able to demonstrate the postulate to yell the GILLETTE together with SENSOR merchandise marks on that sticker. Thirdly, the packaging of razor blades marketed past times LA-Laboratories clearly bore its ain PARASON together with FLEXOR signs, unequivocally indicating the rootage of the product. The reference to the GILLETTE together with SENSOR marks inwards little measure lettering on stickers of a relatively little size affixed to the outside of that packaging could non inwards whatever way stimulate got given the impression that at that spot was a commercial connector betwixt Gillette together with LA‑Laboratories. The Helsingin hovioikeus thus annulled the judgment of the Helsingin käräjäoikeus together with dismissed the activity brought past times the Gillette companies.
Gillette together with then appealed to the Korkein oikeus, which took the persuasion that the instance raised questions every bit to the interpretation of Article 6(1)(c) of Directive 89/104 inwards relation to the criteria for determining whether, past times its nature, a production is comparable to a spare component subdivision or an accessory, inwards relation to the requirement that utilisation of a grade belonging to unopen to other somebody must endure necessary inwards gild to betoken the intended purpose of a product, together with inwards relation to the concept of honest practices inwards industrial or commercial matters, the interpretation of those provisions also having to accept trouble organization human relationship of Directive 84/450. In those circumstances, the Korkein oikeus decided to remain the proceedings together with refer the next questions to the Court of Justice for a preliminary ruling:
"When applying Article 6(1)(c) of the First Council Directive 89/104/EEC to estimate the laws of the Member United States relating to merchandise marks:,
(1) What are the criteria
(a) on the ground of which the query of regarding a production every bit a spare component subdivision or accessory is to endure decided, and
(b) on the ground of which those products to endure regarded every bit other than spare parts together with accessories which tin give the sack also autumn inside the compass of the said subparagraph are to endure determined?
(2) Is the permissibility of the utilisation of a 3rd party’s merchandise grade to endure assessed differently, depending on whether the production is similar a spare component subdivision or accessory or whether it is a production which tin give the sack autumn inside the compass of the said subparagraph on unopen to other basis?
(3) How should the requirement that the utilisation must endure “necessary” to betoken the intended purpose of a production endure interpreted? Can the criterion of necessity endure satisfied fifty-fifty though it would inwards itself endure possible to province the intended purpose without an limited reference to the 3rd party’s merchandise mark, past times only mentioning exclusively for instance the technical regulation of surgical operation of the product? What significance does it stimulate got inwards that instance that the contestation may endure to a greater extent than hard for consumers to sympathize if at that spot is no limited reference to the 3rd party’s merchandise mark?
(4) What factors should endure taken into trouble organization human relationship when assessing utilisation inwards accordance alongside honest commercial practice? Does mentioning a 3rd party’s merchandise grade inwards connector alongside the marketing of one’s ain production establish a reference to the fact that the marketer’s ain production corresponds, inwards lineament together with technically or every bit regards its other properties, to the production designated past times the 3rd party’s merchandise mark?
(5) Does it touching the permissibility of the utilisation of a 3rd party’s merchandise grade that the economical operator who refers to the 3rd party’s merchandise grade also markets, inwards improver to a spare component subdivision or accessory, a production of his ain alongside which that spare component subdivision or accessory is intended to endure used with?"
The rulingIn respond to those questions the European Court of Justice ruled every bit follows:
"1. The lawfulness or otherwise of the utilisation of the merchandise grade nether Article 6(1)(c) of the First Council Directive 89/104/EEC of 21 Dec 1988 to estimate the laws of the Member United States relating to merchandise marks depends on whether that utilisation is necessary to betoken the intended purpose of a product.
Use of the merchandise grade past times a 3rd political party who is non its possessor is necessary inwards gild to betoken the intended purpose of a production marketed past times that 3rd political party where such utilisation inwards practise constitutes the exclusively way of providing Earth alongside comprehensible together with consummate data on that intended purpose inwards gild to save the undistorted organization of contest inwards the marketplace position for that product.
It is for the national courtroom to determine whether, inwards the instance inwards the primary proceedings, such utilisation is necessary, taking trouble organization human relationship of the nature of Earth for which the production marketed past times the 3rd political party inwards query is intended.
Since Article 6(1)(c) of Directive 89/104 makes no distinction betwixt the possible intended purposes of products when assessing the lawfulness of the utilisation of the merchandise mark, the criteria for assessing the lawfulness of the utilisation of the merchandise grade alongside accessories or spare parts inwards item are thus no unlike from those applicable to other categories of possible intended purposes for the products.
2. The status of ‘honest use’ inside the pregnant of Article 6(1)(c) of Directive 89/104, constitutes inwards gist the aspect of a duty to human activity fairly inwards relation to the legitimate interests of the merchandise grade owner.
The utilisation of the merchandise grade volition non endure inwards accordance alongside honest practices inwards industrial together with commercial matters if, for example:
– it is done inwards such a way every bit to give the impression that at that spot is a commercial connector betwixt the 3rd political party together with the merchandise grade owner;
– it affects the value of the merchandise grade past times taking unfair wages of its distinctive grapheme or repute;
– it entails the discrediting or denigration of that mark;
– or where the 3rd political party presents its production every bit an imitation or replica of the production bearing the merchandise grade of which it is non the owner.
The fact that a 3rd political party uses a merchandise grade of which it is non the possessor inwards gild to betoken the intended purpose of the production which it markets does non necessarily hateful that it is presenting it every bit beingness of the same lineament as, or having equivalent properties to, those of the production bearing the merchandise mark. Whether at that spot has been such presentation depends on the facts of the case, together with it is for the referring courtroom to determine whether it has taken house past times reference to the circumstances.
Whether the production marketed past times the 3rd political party has been presented every bit beingness of the same lineament as, or having equivalent properties to, the production whose merchandise grade is beingness used is a element which the referring courtroom must accept into consideration when it verifies that that utilisation is made inwards accordance alongside honest practices inwards industrial or commercial matters.
3. Where a 3rd political party that uses a merchandise grade of which it is non the possessor markets non exclusively a spare component subdivision or an accessory but also the production itself alongside which the spare component subdivision or accessory is intended to endure used, such utilisation falls inside the compass of Article 6(1)(c) of Directive 89/104 inwards so far every bit it is necessary to betoken the intended purpose of the production marketed past times the latter together with is made inwards accordance alongside honest practices inwards industrial together with commercial matters".
can't assist feeling that the Court has couched its ruling inwards price that are a adept bargain narrower than is adept for the surroundings of robust contest that the EU wishes to create. But since he experience asleep 3 times piece trying to read the decision, he promises to give it his farther attending tomorrow, when he is fresher.
