# C_2005132EN.01000802.xml

| 28.5.2005 | EN | Official Journal of the European Union | C 132/8 |
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28.5.2005

EN

Official Journal of the European Union

C 132/8

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JUDGMENT OF THE COURT

JUDGMENT OF THE COURT

(Third Chamber)

of 17 March 2005

in Case C-228/03 (reference for a preliminary ruling from the Korkein oikeus): The Gillette Company, Gillette Group Finland Oy v LA-Laboratories Ltd Oy (1)

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(Trade marks - Directive 89/104/EEC - Article 6(1)(c) - Limitations on the protection conferred by the trade mark - Use by a third party where it is necessary to indicate the intended purpose of a product or service)

(2005/C 132/15)

Language of the case: Finnish

In Case C-228/03: reference for a preliminary ruling under Article 234 EC from the Korkein oikeus (Finland), made by decision of 23 May 2003, received at the Court on 26 May 2003, in the proceedings pending before that court between The Gillette Company, Gillette Group Finland Oy and LA-Laboratories Ltd Oy — the Court (Third Chamber), composed of A. Rosas, President of the Chamber, A. Borg Barthet, S. von Bahr, U. Lõhmus and A. Ó Caoimh (Rapporteur), Judges; A. Tizzano, Advocate General; R. Grass, Registrar, gave a judgment on 17 March 2005, the operative part of which is as follows:

| 1. | The lawfulness or otherwise of the use of the trade mark under Article 6(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks depends on whether that use is necessary to indicate the intended purpose of a product.
  Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product.
  It is for the national court to determine whether, in the case in the main proceedings, such use is necessary, taking account of the nature of the public for which the product marketed by the third party in question is intended.
  Since Article 6(1)(c) of Directive 89/104 makes no distinction between the possible intended purposes of products when assessing the lawfulness of the use of the trade mark, the criteria for assessing the lawfulness of the use of the trade mark with accessories or spare parts in particular are thus no different from those applicable to other categories of possible intended purposes for the products. |
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1.

The lawfulness or otherwise of the use of the trade mark under Article 6(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks depends on whether that use is necessary to indicate the intended purpose of a product.

Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product.

It is for the national court to determine whether, in the case in the main proceedings, such use is necessary, taking account of the nature of the public for which the product marketed by the third party in question is intended.

Since Article 6(1)(c) of Directive 89/104 makes no distinction between the possible intended purposes of products when assessing the lawfulness of the use of the trade mark, the criteria for assessing the lawfulness of the use of the trade mark with accessories or spare parts in particular are thus no different from those applicable to other categories of possible intended purposes for the products.

| 2. | The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.
  The use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example:






  — | it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner; |
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2.

The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.

The use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example:

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it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner;

| — | it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute; |
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it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute;

| — | it entails the discrediting or denigration of that mark; |
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it entails the discrediting or denigration of that mark;

| — | or where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner. |
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or where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner.

The fact that a third party uses a trade mark of which it is not the owner in order to indicate the intended purpose of the product which it markets does not necessarily mean that it is presenting it as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark. Whether there has been such presentation depends on the facts of the case, and it is for the referring court to determine whether it has taken place by reference to the circumstances.

Whether the product marketed by the third party has been presented as being of the same quality as, or having equivalent properties to, the product whose trade mark is being used is a factor which the referring court must take into consideration when it verifies that that use is made in accordance with honest practices in industrial or commercial matters.

| 3. | Where a third party that uses a trade mark of which it is not the owner markets not only a spare part or an accessory but also the product itself with which the spare part or accessory is intended to be used, such use falls within the scope of Article 6(1)(c) of Directive 89/104 in so far as it is necessary to indicate the intended purpose of the product marketed by the latter and is made in accordance with honest practices in industrial and commercial matters. |
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3.

Where a third party that uses a trade mark of which it is not the owner markets not only a spare part or an accessory but also the product itself with which the spare part or accessory is intended to be used, such use falls within the scope of Article 6(1)(c) of Directive 89/104 in so far as it is necessary to indicate the intended purpose of the product marketed by the latter and is made in accordance with honest practices in industrial and commercial matters.

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(1)  OJ C 171 of 19.07.2003.

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