*Two Additional Ideas About Portakabin v Primakabin

This post in an addition/update to my previous post in which I’ve already analysed a few aspects covered in the ECJ’s Primakabin decision.

A: In case para 86 is saying that someone who is using a trademark as keyword but not offering (reselling) any of the TM’s products or services on his website is causing damage to function of indicating origin would that mean that it is GENERALLY not allowed to book third party TM as keywords if you don’t sell the product on your website?

“86 In that regard, where the reseller, without the consent of a trade mark proprietor, removes that trade mark from the goods (‘de-branding’) and replaces it with a label bearing the reseller’s name, with the result that the trade mark of the manufacturer of the goods in question is entirely concealed, the trade mark proprietor is entitled to prevent the reseller from using that mark to advertise that resale. In such a case, damage is caused to the essential function of the trade mark, which is to indicate and guarantee the origin of the goods, and the consumer is prevented from distinguishing the goods originating from the proprietor and those originating from the reseller or other third parties (see, to that effect, Case C‑349/95 Loendersloot [1997] ECR I‑6227, paragraph 24, and Boehringer Ingelheim and Others, paragraphs 14, 32 and 45 to 47).”

B: To my understanding the ECJ has introduced the criteria of  use being “seriously detrimental to the reputation of the mark” in respect to Art 7 (2). (eg para 92 last sentence) I am somehow suspicious about the use of the word “reputation“. Is it possible that such detrimental use is only possible where the trademark actually is a trademark with reputation as mentioned in Art 5 (2)?

7 Responses to “*Two Additional Ideas About Portakabin v Primakabin”

  1. 1 cabinguy 11/08/2010 at 13:55

    I can understand generally why a company would be upset about their TM being used as a keyword then another product sold, however when their TM has actually entered the language as the generic term for that type of product; Hoover, Biro, Portakabin etc then I really don’t see how they can complain. It’s like they’re wanting the best of both worlds.

    • 2 austrotrabant 11/08/2010 at 15:38

      I generally agree, but has Portakabin already become a generic term?
      I really mean that as a questions as I am obviously not in the portable cabin trading business…

  2. 3 cabinguy 11/08/2010 at 15:53

    Yes, very much so in the UK, Austrailia and NZ. In fact more so with the general public rather than people in the cabin industry.

    • 4 austrotrabant 11/08/2010 at 16:05

      Cool, didn’t know that! Will keep that bit of information in mind.
      However, as far as I can remember the ECJ didn’t deal with this question. Presumably one of the lower courts did.
      Would you also find the term in a dictionary as a synonym?

  3. 7 Martin 28/04/2011 at 18:53

    I believe the correct understanding of paragraph 86 is that the retailer may not remove the brand of the trade mark holder and place his/her own brand on that very same product. Actualy had a case about this in Sweden between sodastream and viking soda in which the latter bought used sodastream bottles and placed their own brand on them.

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