ÖKO-Test Verlag GmbH v Dr. Rudolf Liebe Nachf. GmbH & Co.KG.
Date: 2019-04-11
28


As regards, first of all, Article 9(1)(a) of Regulation No 207/2009 and Article 5(1)(a) of Directive 2008/95, it should be noted that those provisions refer to the so-called ‘double identity’ situation, in which use by a third party of a sign identical with the trade mark is made in relation to goods or services that are identical with those for which the trade mark is registered (judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 33).
29


The wording ‘in relation to goods or services’, which features in those provisions, relates, in principle, to goods or services of a third party who uses a sign identical with the mark. Should the case arise, it can also refer to goods or services of another person on whose behalf the third party is acting (judgment of 23 March 2010, Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 60 and the case-law cited).
31


As the Court has already held, use of the sign by the third party to identify the goods of the trade mark proprietor where those goods constitute the actual subject matter of services provided by that third party can, exceptionally, be covered by those provisions. In such a case, that sign is used to identify the origin of the goods that are the subject matter of those services and there is a specific and indissociable link between the goods bearing the trade mark and those services. However, apart from that specific case, Article 9(1)(a) of Regulation No 207/2009 and Article 5(1)(a) of Directive 2008/95 must be interpreted as covering the use of a sign identical to the trade mark in respect of goods marketed or services supplied by the third party that are identical to those for which the trade mark is registered (see, to that effect, judgment of 25 January 2007, Adam Opel, C‑48/05, EU:C:2007:55, paragraphs 27 and 28).
32


The specific case referred to in the preceding paragraph concerns, in particular, situations in which a service provider makes unauthorised use of a sign identical to the trade mark of a manufacturer of goods in order inform the public that he has specialised or is a specialist in those products (see, to that effect, judgment of 3 March 2016, Daimler, C‑179/15, EU:C:2016:134, paragraph 28 and the case-law cited).
35


Like the expression ‘in relation to goods or services’, which appears in Article 9(1)(a) of Regulation No 207/2009 and Article 5(1)(a) of Directive 2008/95, the words ‘goods or services covered by … the sign’ referred to in paragraph 1(b) of those articles cover, in principle, the goods marketed or services supplied by the third party (judgment of 12 June 2008, O2 Holdings and O2 (UK), C‑533/06, EU:C:2008:339, paragraph 34). In the absence of any similarity between the goods or services of the third party and those for which the mark is registered, the protection granted by those provisions is not applicable (see, in particular, judgment of 15 December 2011, Frisdranken Winters, C‑119/10, EU:C:2011:837, paragraphs 31 to 33).
40


Furthermore, nothing in the objectives of EU trade mark legislation, such as the objective of contributing to the system of undistorted competition in the Union (see, in particular, to that effect, judgments of 4 October 2001, Merz & Krell, C‑517/99, EU:C:2001:510, paragraphs 21 and 22, and of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 38), supports the conclusion that the purpose of that legislation requires that the proprietor of an individual trade mark consisting of a quality label must be able to oppose, on the basis of Article 9(1)(a) and (b) of Regulation No 207/2009 or Article 5(1)(a) and (b) of Directive 2008/95, the affixing, by the manufacturer of a product, of that label together with the result of the test to which the product was subjected.
45


The provisions referred to in the preceding paragraph determine the scope of the protection that is afforded to the proprietors of marks with a reputation. They entitle those proprietors to prohibit any third party from making, in the course of trade and without the consent of the proprietor, use without due cause of an identical or similar sign — whether for similar goods or services or for goods or services not similar to those for which those marks are registered — that takes unfair advantage of the distinctive character or the repute of those marks or is detrimental to that distinctive character or repute. The exercise of that right is not conditional upon there being a likelihood of confusion on the part of the relevant section of the public (see, to that effect, inter alia, judgments of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraphs 68, 70 and 71, and of 20 July 2017, Ornua, C‑93/16, EU:C:2017:571, paragraph 50).
47


In that regard, it should be recalled that the concept of ‘reputation’ referred to in Article 9(1)(c) of Regulation No 207/2009 and Article 5(2) of Directive 2008/95, assumes a certain degree of knowledge amongst the relevant public. That public must be determined by reference to the product or service marketed under the trade mark concerned and the degree of knowledge required must be considered to be reached when the trade mark is known by a significant part of that public (see, to that effect, judgments of 6 October 2009, PAGO International, C‑301/07, EU:C:2009:611, paragraphs 21 to 24, and of 3 September 2015, Iron & Smith, C‑125/14, EU:C:2015:539, paragraph 17).
50


As regards, in particular, Article 9(1)(c), it should also be recalled that it suffices, in order for the proprietor of an EU trade mark to enjoy the protection granted by that provision, that that mark has a reputation in a substantial part of the territory of the European Union, and that part may, in some circumstances, correspond to the territory of a single Member State. If that condition is satisfied, the EU trade mark at issue must be considered to have a reputation in the whole of the European Union (see, to that effect, judgments of 6 October 2009, PAGO International, C‑301/07, EU:C:2009:611, paragraphs 27, 29 and 30, and of 20 July 2017, Ornua, C‑93/16, EU:C:2017:571, paragraph 51).
52


It will therefore be for the referring court to examine whether the affixing by Dr. Liebe, of a sign identical with, or similar to, the ÖKO-TEST marks to its products enabled Dr. Liebe to take unfair advantage of the distinctive character or the reputation of those marks or was detrimental to that distinctive character or reputation. Should it find that to be the case, the referring court will, in addition, have to assess whether Dr. Liebe has established, in this case, a ‘due cause’, within the meaning of Article 9(1)(c) of Regulation No 207/2009 and of Article 5(2) of Directive 2008/95, in relation to the affixing of that sign to those products. In the latter case, it would have to be concluded that ÖKO-Test Verlag does not have the right to prohibit that use on the basis of those provisions (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraphs 43 and 44).