The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance.
Held: The function of a trade mark was to guarantee the identity or origin of the goods, and distinguish them from goods of other origins. The purpose of the Directive was to ensure that the owner was able to protect his specific interests. Whatever the trader did to proclaim that the goods he sold did not originate from the claimants, he could not, for example, prevent confusion on a resale. The purpose of the attachment of the mark was not for purely descriptive purposes. The use of the mark in this way also diluted the guarantee of origin offered by the owner when using it itself. The articles were infringing.
Judges:
Iglesias, Puissochet, Wathelet, Timmermans, Gulmann, Edward, Jann, Skouris, Macken, Colneric, von Bahr JJ
Citations:
C-206/01, [2003] RPC 144, [2002] EUECJ C-206/01, [2002] ECR I-10273, [2003] ETMR 19
Links:
Statutes:
First Council Directive 89/104/EEC Dec 21 1988 Art 5(1)(a)
Citing:
Reference From – Arsenal Football Club Plc v Reed ChD 6-Apr-2001
The defendant had sold memorabilia using the claimant’s name, and marks for thirty years. He sought to make it clear that the products were not sourced from the club. They were purchased, generally, by people who wore them as badges of allegiance to . .
Remitted to – Arsenal Football Club plc v Reed ChD 12-Dec-2002
The Club had claimed trade mark infringement against the defendant who sold Arsenal memorabilia, but claimed that the use was not a trade mark use. The case was referred to the European Court of Justice who decided in favour of the club, who then . .
Distinguished – Michael Holterhoff v Ulrich Freiesleben ECJ 14-May-2002
A trade mark was found to have been used to describe a method of cutting precious stones, rather than to identify their producer. . .
Cited by:
Referred to – Arsenal Football Club Plc v Reed ChD 6-Apr-2001
The defendant had sold memorabilia using the claimant’s name, and marks for thirty years. He sought to make it clear that the products were not sourced from the club. They were purchased, generally, by people who wore them as badges of allegiance to . .
Remitted from – Arsenal Football Club plc v Reed ChD 12-Dec-2002
The Club had claimed trade mark infringement against the defendant who sold Arsenal memorabilia, but claimed that the use was not a trade mark use. The case was referred to the European Court of Justice who decided in favour of the club, who then . .
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Linkin Park TMR 3-Aug-2004
The applicant sought registration of the mark ‘Linkin Park’ under the classifications including posters. The name had been used by a music band, and objection was made, saying it would jeopardise the guarantee of origin associated with the name.
Cited – Eli Lilly and Company and Another v 8PM Chemist Ltd CA 5-Feb-2008
The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the . .
Cited – Wilson v Yahoo! UK Ltd and Another ChD 20-Feb-2008
The claimant had carried on business as ‘Mr Spicy’ selling snacks, and had obtained community trade marks for the name. He said that the defendant had allowed the infringement of his rights by allowing sainsbury’s to use the terms in their keywords . .
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 06 June 2022; Ref: scu.178197
