European Parliament, 5 November 2013

Trademarks, Free Speech, Undistorted Competition

Prof. Dr. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

EU Trademark Law

Trade Mark Directive

89/104/EEC (1988) = 2008/95/EC (2008)

TMD

Community Trade Mark Regulation 40/94 (1993) =

207/2009 (2009)

CTMR

Rationale of protection

proprietor competitor

consumer

• ensuring honest commercial practices

• consumer protection and information

• contribution to a functioning market

Market transparency

EU Charter of Fundamental Rights

• Art. 17(2): right to property

‘Intellectual property shall be protected.’

• Art. 11(1): freedom of expression and information

‘…shall include freedom to hold opinions and to

receive and impart information and ideas…’

• Art. 16: freedom to conduct a business

‘…in accordance with Union law and national

laws and practices is recognised.’

‘Nevertheless, whatever the protection afforded

to innovation and investment, it is never

absolute. It must always be balanced against

other interests, in the same way as trade mark

protection itself is balanced against them. I

believe that the present cases call for such a

balance as regards freedom of expression and

freedom of commerce.’ (para. 102)

CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro

Not only protection…

• Art. 5(1) TMD

(mandatory)

• consumer

protection

• only a few

specific

exceptions

• Art. 5(2) TMD

(optional)

• protection of

investment

• flexible

‘due cause’

defense

exclusive link with a sign

creation of a brand image

advertising

quality control

Expansion of harmonized protection

CJEU, L’Oréal/Bellure

• ‘...where a third party attempts, through the use

of a sign similar to a mark with a reputation, to

ride on the coat-tails of that mark in order to

benefit from its power of attraction, its reputation

and its prestige, and to exploit, without paying

any financial compensation and without being

required to make efforts of his own in that

regard, the marketing effort expended by the

proprietor of that mark...’ (para. 49)

• no damage required, free-riding sufficient

CJEU, L’Oréal/Bellure: relaxation of infringement criteria

• ‘These functions include not only the essential

function of the trade mark, which is to guarantee

to consumers the origin of the goods or services,

but also its other functions, in particular that of

guaranteeing the quality of the goods or services

in question and those of communication,

investment or advertising.’ (para. 58)

• recognition of further protected functions,

in particular goodwill functions

CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure

…but also freedoms

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

• rationale underlying the limitation

‘…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.’ (para. 34)

• O2:

– registered

bubbles as

a trademark

• Hutchison:

– shows in advertising for telecom services black-

and-white pictures of moving bubbles

– compares prices of telecom services

– not perceived as a source identifier by the public

CJEU, June 12, 2008, case C-533/06, O2/Hutchison

ECJ, 4 November 1997, case C-337/95, Dior/Evora

• Marks & Spencer

– selects the trademark

‘Interflora’ and variants

as search terms

– sponsored search result:

‘M & S Flowers Online

www.marksandspencer.com/flowers

Gorgeous fresh flowers & plants

Order by 5 pm for next day delivery’

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

Sustainable system needed

…same colours and letter type, but written as ‘E$$O’

Due cause defence

• Art. 5(1) TMD

(mandatory)

• consumer

protection

• only a few

specific

exceptions

• Art. 5(2) TMD

(optional)

• protection of

investment

• flexible

‘due cause’

defense

exclusive link with a sign

creation of a brand image

advertising

quality control

General application

not only with regard to marks with a reputation

(Art. 10(2)(c) TMD; Art. 9(2)(c) CTMR)

but with regard to all types of trademark claims (Art. 14(1) TMD;

Art. 12(1) CTMR)

General application

The end. Thank you!

contact: m.r.f.senftleben@vu.nl

Due cause defence

• flexible rights require flexible limitations

• tailor-made balancing

• keeping pace with technical development:

fast reaction to new forms of speech and

new business models

• MPI Overall Functioning Study, § 2.266

‘…allow for flexibility not previously envisaged by

legislation…’

Due cause defence

• implementation strategy?

• MPI Overall Functioning Study, § 2.266

‘…A possible legislative technique would be the

combination of a general exception with specific

examples…’