Ioannis Psarakis, Lecturer, LL.M (III), PhD Cand.
(republished from lawspot.gr)
Summary: Trademark use cases are a key topic for the protection of trademarks (and simple distinctive signs). The new Law 4679/2020 on trademarks lists indicatively the most typical cases in which, if a trademark infringement is identified (likelihood of confusion, likelihood of association or infringement of a mark of reputation), the trademark is infringed and thus protection is granted. It is useful for the trader to be aware of these cases as they largely determine the scope of protection. At the same time, they are a good first indication of the actions before which he should be doubly careful and provide for a check on the existence of third party rights which may be infringed by the use of a particular sign.
Ι. Once again: the importance of trademark registration
We have often emphasized the usefulness of trademark registration by those who are engaged (or even merely intend to engage) in commerce. We have analysed the reasons why such a business choice "makes sense" for him and have based this position on numbers. In fact, if one goes one step further and takes into account the relatively low costs of legal (pre-)control and registration and then contrasts all this with the profit and security for investment and expenditure for building a brand that the - after study and pre-control - registration of a trademark provides, the option of trademark registration is seen as a commercially imperative choice. Trademark registration produces advantages on many levels - the (many) reasons why this is true have already been discussed in our previous article.
With today's newsletter we will focus on the so-called "negative powers" of the trademark. In other words, we will refer to those actions which the mark holder is entitled to prohibit third parties from doing (i.e. if the mark is registered in the Trademark Register - only then we are, strictly speaking, talking about a trademark).
But if we look at this in reverse, by the end of reading the article you are already reading you will have got a very good idea of which actions and activities in transactions can constitute typical cases of trademark infringement; and therefore you should avoid them.
II. Main part
There could, of course, be no better starting point than a careful study of the letter of the law. In the beginning is the law; we apply it and interpret it, both judges and lawyers. Therefore, in what follows we will set out each case of trademark infringement (of those, however, that the law indicatively mentions - see below) with a brief development in order to raise necessary and interesting issues.
The new Trademark Law (Law 4679/2020) in paragraph 4 of Article 7 mentions cases in which the right to the trademark is infringed. Important note that: this will only occur if, through the actions that follow, a likelihood of confusion, likelihood of association or a case of infringement of a trade mark reputation arises (for these concepts see our previous articles here here and here).
Thus, according to the new law, "[...] it may, in particular, be prohibited:
(a) the application of the mark to the products or their packaging,
- This is the classic case where, for example, if there is a likelihood of confusion between the sign and the registered mark, a third party may be prohibited from using the mark to attack the packaging or even the products themselves. For example, shirts are sewn by a third party non-owner company, but with the Nike mark.
(b) the attack of the mark on genuine goods produced by the proprietor, who intended to market them as anonymous or under another mark,
- The interesting thing in this case is that the infringer of the right to the mark is attacking genuine products. For commercial reasons, however, the proprietor may wish to market without his trademark. According to the wording of the law, this desire is also protected.
(c) the removal of the trade mark from genuine products of the signatory and their placing on the market as anonymous or under another trade mark,
- This is the reverse of the second case.
(d) the offering or marketing of goods or the holding of goods for marketing or the offering or provision of services using the sign,
- This is, obviously, the "next stage" of the first case: there the mere assault is prohibited, whereas here the purpose of marketing/offering them and, to a large extent, the marketing itself is prohibited. Together, these two 'stages' lay the foundations for a continuous infringement of the absolute right to the trade mark, from the moment of the attack on the mark and the possession of the goods until the goods are finally put on the market. Relevant is paragraph 86 of the judgment of the Court of Justice of the European Union (then the Court of Justice of the European Communities) in Case C 558/08 (Portakabin), which concerned the affixing of labels to detached buildings. In that case, the Court held that 'in such a case, the essential function of the trade mark, which is to indicate and guarantee the origin of the product, is compromised and the consumer is prevented from distinguishing the products originating from the trade mark owner from those originating from the reseller or from other third parties'. An interesting counter-case, according to the submissions of Advocate General Campos Sanchez-Bordona in Case C 129/17 Mitsubishi forklifts (in particular para. 71), is one in which, despite the removal of the Mitsubishi mark and the affixing of another sign, the public still perceives the origin of the goods as being from Mitsubishi because of other external characteristics which betray it. Therefore, in the absence of a likelihood of confusion, the protection sought cannot be granted.
(e) the import or export of products using the mark,
- Under the 5th indent, the import or export of the goods may be prohibited by the use of a sign which causes, for example, a likelihood of confusion with the registered trade mark. The prohibition of imports is intended to protect the commercial interests of the signatory in the following way: he should have the first (and only) reason for the 'first movement' of his goods within the Union. We are thus talking about the validity of the 'Union' claim of the right of the marker in respect of the first movement, but not about 'worldwide' claim. Thus, the circulation of the goods within the EU by the marker (or at least with his consent) allows the circulation of the goods by any third party (the right has been exhausted). Conversely, this will not be the case - i.e. the goods cannot be imported into the EU by any third party - if they are moved outside the EU, even if this (i.e. movement outside the EU) is done by the marker or with his consent. This is how we describe the issue of 'parallel imports'.
- The practical significance of this difference is also interesting, and it sheds light on the reason why the principle of only EU - i.e. not global - consumption is considered to protect the commercial interests of the marker: in this way the marker can prohibit the importation into the EU of goods purchased at a very low cost outside the EU.
- The issue of parallel imports was dealt with by the decision of the Thessaloniki Court of Appeal in Case 32/2019: "Such imports are called 'parallel' because they run parallel and compete with those made by the marker himself or by persons authorised by him. Under the law in force, the legality of parallel imports depends on whether or not the mark owner's right to the mark has been exhausted.
(f) the use of the sign as a trade or company name or as part of a trade or company name,
- The legislative reason for this case is that this may also lead to a risk of confusion as to the origin of goods.
(g) the use of the sign in professional printed material and in advertising, including social media,
- The example of garages specialising in the repair of cars from specific car manufacturers is a useful way of understanding this case. In their advertising (e.g. in brochures or via social media), they use the brands of each car manufacturer in whose cars they (claim to) specialise; these will almost always be reputational brands (see here). The placement of these marks, depending on the use to which they are put, is likely to cause, for example, a risk of confusion among the public, who will thus believe that the tools and machines used are the choice of the signatory and that he or she is likely to select and train the technicians. In other words, the confusion will lead to the impression being created that it is an authorised repairer of, for example, BMW, whereas in reality - at best - the owner of the repairer will simply be entitled to claim that he is skilled in the repair of BMW cars; that is to say, that it is his speciality. A likelihood of confusion is therefore likely to be diagnosed - depending, of course, on the facts of each case - if, for example, the company's brochure states 'BMW repair shop'. In any event, the fact that the likelihood of confusion includes that of association (see here) adds to any likelihood of protection.
(h) the use of the sign in comparative advertising in a manner contrary to paragraph 2 of article 9 of Law No. 2251/1994".
- The most frequently cited case law on this issue is that of the Court of Justice of the European Communities (ECJ) in Case C 533/06 (O2), where it was held, inter alia, that the use of a sign similar to a registered trade mark in the advertisement at issue did not create a likelihood of confusion in the mind of the consumer, since, taken as a whole, it was not misleading and, in particular, did not suggest that there was a commercial link between O2 and H3G (cf. The commercial in question can be found at the following address, is short and interesting to view: https://www.youtube.com/watch?v=U_XFVYrQbzg&ab_channel=LegalBubbles).
III. Instead of an epilogue
Bearing the above in mind, two further observations are necessary to complete the section on trade mark infringement cases:
First, as the law states, "may in particular be prohibited [...]". The word 'in particular' is crucial. In every case in which a statutory text contains the word 'in particular', it is, as we say in legal science, an 'indicative enumeration'. That, when applied to the present case, has the following meaning in simple terms: not only those cases of use are prohibited; the law merely refers to those cases which are most frequently encountered in practice. After all, the law could not contain an 'exhaustive enumeration - the opposite of an indicative enumeration' - since the commercial environment is constantly evolving and developing. With the indicative enumeration, the legislator deliberately leaves 'the door open' in order, for example, not to exclude cases that might arise in the future and which, if he had known, he would have caught.
Secondly, it is useful to recall that both for trade mark infringement cases and more generally for the more specific conditions of protection, it is necessary to be well informed and to keep abreast of developments in administrative practice and case law, in particular of the EU institutions.
This is for the following simple reason: like the whole of the new Law 4679/2020, the provisions under review are a transposition of EU Directive 2015/2436 into national law. Furthermore, the content of the provisions of EU Directive 2015/2436 EU on the national trade mark is not deviated from (almost not at all) by EU Regulation 2017/1001 EU on the EU trade mark. Therefore, the case law of the Court of Justice of the European Union, the General Court of the European Union, the decisions of the EUIPO and the preambles of the EU texts are absolutely useful for the interpretation of the national provisions; a reality that is recognised by both the national Courts and the Administration (Administration of Trade Marks - Administrative Commission for Trade Marks).