Experience has taught me that most people at conferences instantly start checking their email or fall asleep as soon as I start mentioning Art 5 of the Trade Mark Directive (89/104/EEC).
Today in the afternoon I’ve started preparing charts, showing ‘how everything works‘ and how the ECJ has effectively added the criteria of ‘affecting trade mark functions‘ also to lit. a of Art 5 (1). Thus not any use (in commerce etc etc.) of an identical sign for identical goods or services fulfils lit. a straight away, but it further needs to be shown that a TM-function got impaired. [If you are into trademark law I think this sentence should get you really excited!]
While I was actually still pondering what it means that the protection arising out of the protection of lit. a is more extensive then the one arising out of lit. b. with its likeliness of confusion, my eyes got caught by a word in par. 49 that somehow felt wrong. Where the h…. do the words ‘or similar‘ in paragraph 49 of the Google France decision come from when speaking about Art 5 (1) lit. a?
Its Friday evening, English is not my first language and I might already be a bit nervous about the presentation I will hold next Tuesday (KnowRi§ht 2010) … but can anyone please explain this to me? Thus I am asking the scientific/web community for help!
However, step by step:
To my limited understanding Art 5 (1) a applies for cases of double identity, meaning identical sign, identical goods services. Right?
Art 5 (1) Directive 89/104/EEC reads as following:
The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) 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;
Par 16 of Céline (which got cited in par 49 of Google France, see below) reads as following:
As is clear from the Court’s case-law (Arsenal Football Club; Case C-245/02 Anheuser-Busch  ECR I‑10989; and Adam Opel), the proprietor of a registered mark may prevent the use of a sign by a third party which is identical to his mark under Article 5(1)(a) of the directive only if the following four conditions are satisfied:
– that use must be in the course of trade;
– it must be without the consent of the proprietor of the mark;
– it must be in respect of goods or services which are identical to those for which the mark is registered, and
– it must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.
In the summary at the end of the Google France decision it says:
Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
However par 49 of Google France reads like this:
By application of Article 5(1)(a) of Directive 89/104 or, in the case of Community trade marks, of Article 9(1)(a) of Regulation No 40/94, the proprietor of a trade mark is entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with that trade mark when that use is in the course of trade, is in relation to goods or services which are identical with, or similar to, those for which that trade mark is registered, and affects, or is liable to affect, the functions of the trade mark (see, inter alia, Case C‑17/06 Céline  ECR I‑7041, paragraph 16; order in Case C‑62/08 UDV North America  ECR I‑0000, paragraph 42; and Case C‑487/07 L’Oréal and Others  ECR I‑0000, paragraph 58).
I’ve of course also check the German version of Google France which only speaks about identical… so am I save to assume that this was an editorial mistake?
Nach Art. 5 Abs. 1 Buchst. a der Richtlinie 89/104 bzw. im Fall der Gemeinschaftsmarke Art. 9 Abs. 1 Buchst. a der Verordnung Nr. 40/94 ist der Markeninhaber berechtigt, Dritten zu verbieten, ohne seine Zustimmung ein mit der Marke identisches Zeichen zu benutzen, wenn diese Benutzung im geschäftlichen Verkehr erfolgt, für Waren oder Dienstleistungen geschieht, die mit denjenigen identisch sind, für die die Marke eingetragen ist, und die Funktionen der Marke beeinträchtigt oder beeinträchtigen könnte (vgl. insbesondere Urteil vom 11. September 2007, Céline, C‑17/06, Slg. 2007, I‑7041, Randnr. 16, Beschluss vom 19. Februar 2009, UDV North America, C‑62/08, Slg. 2009, I‑1279, Randnr. 42, und Urteil vom 18. Juni 2009, L’Oréal u. a., C‑487/07, Slg. 2009, I‑0000, Randnr. 58).