Toshiba Europe GmbH v Katun Germany GmbH.
Date: 2001-10-25
28 As regards, first, the definition of comparative advertising, it must be observed that, according to Article 2(1) of Directive 84/450 as amended, advertising means, for the purposes of that directive, the making of a representation in any form in connection with a trade, business, craft or profession in order to promote the supply of goods or services, including immovable property, rights and obligations. In view of that especially broad definition, advertising, including comparative advertising, may occur in very different forms.
29 As regards the comparative nature of advertising within the meaning of Directive 84/450 as amended, it is apparent from Article 2(2a) that the test is that comparative advertising identifies, explicitly or by implication, a competitor or goods or services offered by a competitor.
30 Likewise, as far as that test is concerned, the Community legislature has laid down a broad definition, as is confirmed by the sixth recital of the preamble to Directive 97/55, which states that the legislature wished to lay down a broad concept of comparative advertising so as to cover all its forms.
31 In order for there to be comparative advertising within the meaning of Article 2(2a) of Directive 84/450 as amended, it is therefore sufficient for a representation to be made in any form which refers, even by implication, to a competitor or to the goods or services which he offers. It does not matter that there is a comparison between the goods and services offered by the advertiser and those of a competitor.
34 However, it is apparent from Article 6(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and the case-law of the Court (Case C-63/97 BMW [1999] ECR I-905, paragraphs 58 to 60) that the use of another person's trade mark may be legitimate where it is necessary to inform the public of the nature of the products or the intended purpose of the services offered.
36 In those circumstances, it is necessary to take account of the objectives of Directive 84/450 as amended. According to the second recital of the preamble to Directive 97/55, comparative advertising will help demonstrate objectively the merits of the various comparable products and thus stimulate competition between suppliers of goods and services to the consumer's advantage.
37 For those reasons, the conditions required of comparative advertising must be interpreted in the sense most favourable to it.
48 With regard to the distinctiveness of a mark, the Court has already held that in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 22).
52 However, it is for the national court to determine whether the equipment manufacturer's product numbers in question in the case before it are distinguishing marks within the meaning of Article 3a(1)(g) of Directive 84/450 as amended, in the sense that they are identified as coming from a particular undertaking. In order to do so, it will have to take into account the perception of an average individual who is reasonably well informed and reasonably observant and circumspect. Account should be taken of the type of persons at whom the advertising is directed. In the present case, those persons appear to be specialist traders who are much less likely than final consumers to associate the reputation of the equipment manufacturer's products with those of the competing supplier.
53 Even assuming that the equipment manufacturer's product numbers are, as such, distinguishing marks within the meaning of Article 3a(1)(g) of Directive 84/450 as amended, it will in any event be necessary, when assessing whether the condition laid down in that provision has been observed, to have regard to the 15th recital of the preamble to Directive 97/55, which states that the use of a trade mark or distinguishing mark does not breach the right to the mark where it complies with the conditions laid down by Directive 84/450 as amended, the aim being solely to distinguish between the products and services of the advertiser and those of his competitor and thus to highlight differences objectively.
54 An advertiser cannot be considered as taking unfair advantage of the reputation attached to distinguishing marks of his competitor if effective competition on the relevant market is conditional upon a reference to those marks.
55 Further, the Court has already held that a third party's use of a mark may take unfair advantage of the distinctive character or the reputation of the mark or be detrimental to them, for example by giving the public a false impression of the relationship between the advertiser and the trade mark owner (see the judgment in BMW, cited above, paragraph 40).
56 As stated in paragraph 39 above, the indication of an equipment manufacturer's product numbers alongside a competing supplier's product numbers constitutes a positive statement that the technical features of the two products are equivalent, that is to say, it is a comparison within the meaning of Article 3a(1)(c) of Directive 84/450 as amended.
59 In the present case, it appears that Katun would have difficulty in comparing its products with those of Toshiba Europe if it did not refer to the latter's order numbers. It also seems clear from the examples of Katun's lists of spare parts and consumable items set out in the order for reference that a clear distinction is made between Katun and Toshiba Europe, so that they do not appear to give a false impression concerning the origin of Katun's products.