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Overview of the most important verdicts and judgements related to trademarks

The Law cases, quoted hereafter are very important decisions, and give each time an overview of what the interpretation of certain rules of trademark law should be.

They have been divided in jurisprudence by the European Court of Justice on the one hand and jurisprudence by the Benelux court and the national courts in the Benelux.

Adidas (Court of Appeal Brussels 23/3/87)

Similarly to Adidas, a cheaper trademark had three parallel stripes on the side seams of its sportswear.

Adidas filed a complaint on the basis of infringement of its exclusive rights for three parallel stripes being considered as their proper trademark. It is argued that this seemingly banal feature became distinctive because of its acceptance on a large social scale. The Court is requested to investigate the trademark's use (intensity, duration, etc.) by Adidas.

Before investigating a risk of association (formerly considered the main criterion for determining infringement), the Court had to determine the extend to which a three stripes on the side of sportswear could be considered as an independent trademark. In general, Adidas always combined the three stripes with a three-part leaf, this leaf being commonly used as the Adidas device trademark.

According to the Court, the public's perception should be investigated. Are these stripes considered to be purely ornamental or can they be considered a distinctive feature of the Adidas trademark? Based on this investigation, one could conclude that the 3 stripes were not recognised as an exclusive Adidas trademark.

Daimler Benz/ Haez (Benelux Court 20/12/93)

This case relates to the use of the "MERCEDES" trademark of Daimler-Benz by a dealer who is not officially recognised. The Court declared that trademark use is authorised to indicate that certain products are sold at a specific site, in order to distinguish them from other products of foreign origin. The trademark may not be used to give the impression that there exists a specific link with the trademark's owner or with a certain quality attributed to proper products and/or services. All circumstances of the case should be considered in order to determine if trademark rights are infringed.

Colour trademarks

As far as the distinctiveness of colour marks is concerned, there exist a certain contradiction between the Belgian (Belgacom against BTO) and the Dutch case law (Libertel Groep BV against BTO).

The Dutch judge pronounced a colour trademark to be insufficiently distinctive to give rise to exclusive rights, whereas the Belgian judge declared it to be sufficient. In the meantime, the BMB also accepts colour marks for registration but only because a verdict is expected by the Belgian Supreme Court investigating the case.

Puma / Sabel (Court of Justice EC November 1997)

This case also treats controversial issues which are related to the determination of acceptable infringement criteria such as a risk for confusion or an association risk.

This judgement clarifies the meaning of the criterion stating that "in case confusion originates with the public, including the danger of association with the trademark", which was require_onced in the European Directive. The judge clearly pointed out that possible links made by the public between products and/or services for as far as their origin is concerned should be determined on the basis of circumstances. The feature of a trademark making people remind of another trademark as the sole feature, turns out to be insufficient.

Canon / Cannon (Court of Justice EC 29/9/98)

Within the context of the association criterion, a certain discipline of case law states it is illogical that for well-known trademarks, even for different kinds of products, the use thereof can be prohibited without the necessity of providing proof for a possible danger of confusion. Therefore, it is concluded that the danger of association suffices in case of a well-known trademark, which is not the case for less known trademarks. To this assumption an indirect answer was provided by the Canon judgement. The Court of Justice EC clearly states that the infringement criterion from the Puma/Sabel judgement can be applied, regardless of a well-known trademark being involved or not.

Judgement in the case Lloyd Schuyfabrik / Klijsen (Court of Justice EC 22/6/99) indicates certain criteria for judging the degree of similarity between trademarks. Lloyd Schuhfabrik already introduced in the 1920's shoes in Germany under the Lloyd trademark. Klijsen sells shoes in Germany under the LOINT's trademark since 1991. The Court of Justice raised a prejudicial question introduced by the German judge which was related to the degree of correspondence between trademarks. Correspondence became only one of the criteria to be judged.

The European Court of Justice emphasises the following:

1/ There is a mutual link between trademark correspondence and class similarity among goods or services whereto they refer. In other words, the rather limited degree of class similarity between goods or services is compensated by a high degree of similarity among trademarks and vice versa. Besides, this question is also indirectly introduced in the Canon/Cannon (1998) judgement, namely: to what extend could the public expect products and/or services to have the same origin?

No risk for confusion may be allowed, unless the public would be of the opinion that the services or goods are of the same company or of economically linked companies.

2/ The risk of confusion increases whenever the distinctive force of an older trademark increases and as a result, these stronger trademarks automatically have the benefit of a larger protection.

3/ For determining the distinctive character, the following criteria should be considered:

• Properties, inherent to the trademark, such as its descriptive character
• Market share of the trademark
• Intensity
• Geographical spreading
• Duration of the trademark use
• Amount of advertising costs related to the trademark
• Part of the interested public that considers the goods or services to be related to a certain company because of the trademark
• Declarations made by the Chamber of Commerce and by other professional organisations.

4/ The general opinion upon the risk of confusion between trademarks should be based on the general impression of trademarks.

• The distinctive and dominating components should be considered
• The consumer's impression of the concerned goods and/or services is decisive
• Starting point should be the average, informed, cautious and attentive ordinary consumer
• The judge should determine the degree of visual, auditive and comprehensive similarity.

Parallel-import and exhaustion Silhouette / Hartlauer (Court of Justice EC 16/7/98)

Silhouette-glasses belong generally speaking to higher price categories.

The Austrian company Hartlauer is known for selling through its branches glasses at very low prices. As a result, Silhouette does not sell glasses via the Hartlauer distribution because of the risk of damaging its image.

In October 95, Silhouette sold glass frames to a Bulgarian company named Union Trading. At its turn, Union Trading sold the glasses in November '95 to Harlauer at low value prices. Silhouette brought an action against this practice for infringing trademark rights.

The opponent states that no exclusive rights could be infringed since the glasses where introduced on the market with the market holder's consent and thus the exhaustion rule was applicable.

The Court, however, stated that the exhaustion rule is only applicable when goods are introduced on the market, with the trademark holder's consent and on EC territory only.

In the aforesaid, this was not the case.

Parallel-import and exhaustion Sebago / GB-Unic (1/7/99)

A similar case concerns Dockside shoes sold at low prices in the GB-Unic shops.

Authorising parallel import of goods from outside EES-countries (Economic European Space) does not coincide with the exhaustion regulation of the EC.

In the meantime, the exhaustion principle has been extended to the EES-countries.

The Court of Justice EC clearly states that parallel-import should be introduced on the EES market with the trademark holder's consent in order to have the exhaustion rule put into practice.

The assumption of GB-Unic about the exhaustion rule being applied whenever products sold outside the EES are also sold on EES territory with the trademark holder's consent, is therefore not accepted.

Windsurfing Chiemsee Produktions - und Vertriebs GmbH against Huber en Attenberger (Court of Justice EC 45/99)

Under the Chiemsee trademark are sold both sportswear and especially, windsurfing wear.

The German trademark law explicitly states that no registration is made of trademarks that only consist of references to the product's origin. On the other hand, the German system points out that the aforesaid rule is not applied whenever the trademark is already known to the public because of the use that has already been made of the mark.

Although goods are produced abroad, the registered offices of Chiemsee windsurfing are to be found at the Chiemsee embankments. Between '92 and '94, Chiemsee had already its device trademark registered in Germany under different forms.

Huber company, established in the Chiemsee neighbourhood, sells t-shirts and sweat-shirts with the printed "CHIEMSEE" label. Mr Attenberger also sold in the same neighbourhood, the Chiemsee sportswear stating "CHIEMSEE" and specific graphical elements.

Windsurfing Chiemsee opposes against the usage of its trademark.

The German judge introduces some prejudicial questions related to the interpretation of the Directive:

1/

• Geographical names cannot be protected as trademarks. This is not only the case for those situations where there exist in the public mind an important link between the place of origin and the kind of product to which it refers; but also whenever the name can be used by competitors in future practice as the place of origin.
• Even if no important link exists between the place of origin and the kind of product for which the name is used, the authorities should investigate to what extent the trademark indicates in the public opinion, the place of origin rather that the product in itself.
• Additionally, one should consider the information that the average, relevant portion of the public has at its disposal and which is related to geographical names, features of this place and the kind of product related thereto.
• The link between a geographical name and the product does not necessarily depend upon the production site.

2/

• A geographical name can be registered as a trademark whenever it is used by the concerned public to designate the product rather than the place of origin (being generally adopted).
• Features of distinctiveness may not be considered on the basis of interests that certain competitors might have when reserving the name of the place of origin.
• To determine the trademark's distinctive character obtained by use made thereof, all aspects that may prove a trademark to be sufficient in order to distinguish it from products belonging to other companies should be taken into consideration.
• When the authorities conclude that a considerable portion of the interested public indeed experiences the trademark as an indication of products offered by a certain firm, the condition is met.