Case C-228/03

The Gillette Company and Gillette Group Finland Oy

v

LA-Laboratories Ltd Oy

(Reference for a preliminary ruling from the Korkein oikeus)

(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)

Opinion of Advocate General Tizzano delivered on 9 December 2004

Judgment of the Court (Third Chamber), 17 March 2005.

Summary of the Judgment

1. Approximation of laws – Trade marks – Directive 89/104 – Limitation of the effects of the trade mark – Use of the mark by a third party in order to indicate the intended use of a product – Condition for lawfulness – Whether use necessary – Criteria for assessment – Verification by the national court – Same criteria applied to accessories and spare parts as to other categories of possible intended purposes

(Council Directive 89/104, Art. 6(1)(c))

2. Approximation of laws – Trade marks – Directive 89/104 – Limitation of the effects of the trade mark – Use of the mark by a third party in order to indicate the intended use of a product – Condition for lawfulness – Use in accordance with honest practices in industrial and commercial matters – Criteria for assessment – Verification by the national court

(Council Directive 89/104, Art. 6(1)(c))

3. Approximation of laws – Trade marks – Directive 89/104 – Limitation of the effects of the trade mark – Use of the mark by a third party in order to indicate the intended use of a product – Marketing not only of spare parts or accessories but also of the product itself – Conditions for lawfulness – Whether necessary and in accordance with honest practices in industrial and commercial matters regarding the use of the mark

(Council Directive 89/104, Art. 6(1)(c))

1. The lawfulness or otherwise of a third party’s use of a trade mark to indicate the intended purpose of a product or service, under Article 6(1)(c) of First Directive 89/104 on trade marks, depends on whether that use is necessary to indicate the purpose of the product. That is the case 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 that condition is fulfilled, taking account of the nature of the public for which the product marketed by the third party in question is intended.

Since, moreover, that provision 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.

(see para. 39, operative part 1)

2. The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104 on trade marks, 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;

– 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,

– 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.

(see para. 49, operative part 2)

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 on trade marks 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 or commercial matters.

(see para. 53, operative part 3)