The Gillette Company and Gillette Group Finland Oy v LA-Laboratories Ltd Oy.
Date: 2005-03-17
25. It should be noted as a preliminary point that trade mark rights are an essential element in the system of undistorted competition which the EC Treaty seeks to establish and maintain. Under such a system, an undertaking must be in a position to keep its customers by virtue of the quality of its products and services, something which is possible only if there are distinctive marks which enable customers to identify them (see, in particular, Case C-10/89 Hag [1990] ECR I‑3711, paragraph 13; Case C‑ 517/99 Merz & Krell  [2001] ECR I‑6959, paragraph 21, and Case C-206/01 Arsenal Football Club  [2002] ECR I‑10273, paragraph 47).
26.  In that context, the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see, in particular, Case 102/77 Hoffman-La Roche  [1978] ECR 1139, paragraph 7, Case C-299/99 Philips  [2002] ECR I-5475, paragraph 30, and Arsenal Football Club , paragraph 48).
28. According to the first sentence of Article 5(1) of Directive 89/104, the registered trade mark confers an exclusive right on its owner. In accordance with Article 5(1)(a), the holder of that exclusive right shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered. Article 5(3) of that directive sets out in a non-exhaustive way the types of use which the owner may prohibit under Article 5(1).
29. It is important to note that, by limiting the effects of the rights which a trade mark owner derives from Article 5 of Directive 89/104, Article 6 seeks to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain (see, in particular, Case C-63/97 BMW  [1999] ECR I-905, paragraph 62, and Case C-100/02 Gerolsteiner Brunnen  [2004] ECR I-0000, paragraph 16).
32. Moreover, since the intended purpose of the products as accessories or spare parts is cited only by way of example, those doubtless being the usual situations in which it is necessary to use a trade mark in order to indicate the intended purpose of a product, the application of Article 6(1)(c) of Directive 89/104 is, as the United Kingdom Government and the Commission of the European Communities have rightly pointed out in their observations, not limited to those situations. Therefore, in the circumstances of the main proceedings, it is not necessary to determine whether a product must be regarded as an accessory or a spare part.
33. Secondly, it should be noted, on the one hand, that the Court has already held that use of a trade mark to inform the public that the advertiser is specialised in the sale, or that he carries out the repair and maintenance, of products bearing that trade mark which have been marketed under that mark by its owner or with his consent, constitutes a use indicating the intended purpose of a product within the meaning of Article 6(1)(c) of Directive 89/104 (see BMW , paragraphs 54 and 58 to 63). That information is necessary in order to preserve the system of undistorted competition in the market for that product or service.
34. The same applies to the case in the main proceedings, the marks of which the Gillette Company is the owner being used by a third party in order to provide the public with comprehensible and complete information as to the intended purpose of the product which it markets, that is to say as to its compatibility with the product which bears those trade marks.
35. In addition, it is sufficient to note that such use of a trade mark is necessary in cases where that information cannot in practice be communicated to the public by a third party without use being made of the trade mark of which the latter is not the owner (see, to that effect, BMW , paragraph 60). As the Advocate General has pointed out in points 64 and 71 of his Opinion, that use must in practice be the only means of providing such information.
41. As regards the first part of that question, the Court of Justice has consistently held that the condition of ‘honest use’ within the meaning of Article 6(1) 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 ( BMW , paragraph 61; Gerolsteiner Brunnen , paragraph 24). Such an obligation is similar to that imposed on the reseller where he uses another’s trade mark to advertise the resale of products covered by that mark (Case C-337/95 Parfums Christian Dior  [1997] ECR I-6013, paragraph 45; BMW , paragraph 61).
42. In that regard, use of the trade mark will not comply with honest practices in industrial or commercial matters where, first, it is done in such a manner that it may give the impression that there is a commercial connection between the reseller and the trade mark proprietor ( BMW , paragraph 51).
43. Nor may such use affect the value of the trade mark by taking unfair advantage of its distinctive character or repute ( BMW , paragraph 52).
45. Finally, 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, such use of that mark does not comply with honest practices within the meaning of Article 6(1)(c).
46. It is for the national court to determine whether, in the case in the main proceedings, the use made of the trade marks owned by Gillette Company has been made in accordance with honest practices, taking account, in particular, of the conditions referred to in paragraphs 42 to 45 of this judgment. In that regard, account should be taken of the overall presentation of the product marketed by the third party, particularly the circumstances in which the mark of which the third party is not the owner is displayed in that presentation, the circumstances in which a distinction is made between that mark and the mark or sign of the third party, and the effort made by that third party to ensure that consumers distinguish its products from those of which it is not the trade mark owner.
47. Concerning the second part of that question, as the United Kingdom Government has rightly pointed out in its observations, 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 its product does not necessarily mean that it is presenting that product 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 a 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.