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European Parliament, 5 November 2013
Trademarks, Free Speech, Undistorted Competition
Prof. Dr. Martin SenftlebenVU University Amsterdam
Bird & Bird, The Hague
EU Trademark Law
Trade Mark Directive
89/104/EEC (1988) = 2008/95/EC (2008)
TMD
Community Trade Mark Regulation 40/94 (1993) =
207/2009 (2009)
CTMR
Rationale of protection
proprietor competitor
consumer
• ensuring honest commercial practices
• consumer protection and information
• contribution to a functioning market
Market transparency
EU Charter of Fundamental Rights
• Art. 17(2): right to property
‘Intellectual property shall be protected.’
• Art. 11(1): freedom of expression and information
‘…shall include freedom to hold opinions and to
receive and impart information and ideas…’
• Art. 16: freedom to conduct a business
‘…in accordance with Union law and national
laws and practices is recognised.’
‘Nevertheless, whatever the protection afforded
to innovation and investment, it is never
absolute. It must always be balanced against
other interests, in the same way as trade mark
protection itself is balanced against them. I
believe that the present cases call for such a
balance as regards freedom of expression and
freedom of commerce.’ (para. 102)
CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro
Not only protection…
• Art. 5(1) TMD
(mandatory)
• consumer
protection
• only a few
specific
exceptions
• Art. 5(2) TMD
(optional)
• protection of
investment
• flexible
‘due cause’
defense
exclusive link with a sign
creation of a brand image
advertising
quality control
Expansion of harmonized protection
CJEU, L’Oréal/Bellure
• ‘...where a third party attempts, through the use
of a sign similar to a mark with a reputation, to
ride on the coat-tails of that mark in order to
benefit from its power of attraction, its reputation
and its prestige, and to exploit, without paying
any financial compensation and without being
required to make efforts of his own in that
regard, the marketing effort expended by the
proprietor of that mark...’ (para. 49)
• no damage required, free-riding sufficient
CJEU, L’Oréal/Bellure: relaxation of infringement criteria
• ‘These functions include not only the essential
function of the trade mark, which is to guarantee
to consumers the origin of the goods or services,
but also its other functions, in particular that of
guaranteeing the quality of the goods or services
in question and those of communication,
investment or advertising.’ (para. 58)
• recognition of further protected functions,
in particular goodwill functions
CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure
…but also freedoms
ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories
ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories
• rationale underlying the limitation
‘…in order to provide the public with comprehensible
and complete information as to the intended purpose
of the product which it markets, that is to say as to its
compatibility with the product which bears those
trade marks.’ (para. 34)
• O2:
– registered
bubbles as
a trademark
• Hutchison:
– shows in advertising for telecom services black-
and-white pictures of moving bubbles
– compares prices of telecom services
– not perceived as a source identifier by the public
CJEU, June 12, 2008, case C-533/06, O2/Hutchison
ECJ, 4 November 1997, case C-337/95, Dior/Evora
• Marks & Spencer
– selects the trademark
‘Interflora’ and variants
as search terms
– sponsored search result:
‘M & S Flowers Online
www.marksandspencer.com/flowers
Gorgeous fresh flowers & plants
Order by 5 pm for next day delivery’
CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer
Sustainable system needed
…same colours and letter type, but written as ‘E$$O’
Due cause defence
• Art. 5(1) TMD
(mandatory)
• consumer
protection
• only a few
specific
exceptions
• Art. 5(2) TMD
(optional)
• protection of
investment
• flexible
‘due cause’
defense
exclusive link with a sign
creation of a brand image
advertising
quality control
General application
not only with regard to marks with a reputation
(Art. 10(2)(c) TMD; Art. 9(2)(c) CTMR)
but with regard to all types of trademark claims (Art. 14(1) TMD;
Art. 12(1) CTMR)
General application
The end. Thank you!
contact: m.r.f.senftleben@vu.nl
Due cause defence
• flexible rights require flexible limitations
• tailor-made balancing
• keeping pace with technical development:
fast reaction to new forms of speech and
new business models
• MPI Overall Functioning Study, § 2.266
‘…allow for flexibility not previously envisaged by
legislation…’
Due cause defence
• implementation strategy?
• MPI Overall Functioning Study, § 2.266
‘…A possible legislative technique would be the
combination of a general exception with specific
examples…’
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