The claimant distributed cosmetics and other goods in Germany under the mark ‘Davidoff’, and the defendants used a similar registered mark for their own and similar goods. They sought protection under the directive.
Held: The directive explicitly provided a protection for the user of an earlier mark against the user of a later and similar mark where the goods themselves were dissimilar. Where there was no likelihood of confusion, there should be no protection. However, the Directive must be read in the light of the overall scheme and its objectives. The protection given to similar goods and services should be at least as strong as that for dissimilar services, and the Directive must be read accordingly.: ‘In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings . . consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated.
Such intention will normally be gathered from an express statement of consent. Nevertheless, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights.’
Judges:
Puissochet, Gulmann, Skouris, Macken, Colneric JJ
Citations:
Times 22-Jan-2003, [2003] 1 WLR 1714, [2003] FSR 28, [2003] EUECJ C-292/00, C-292/00
Links:
Statutes:
Directive 89/104/EEC to approximate the laws of member states relating to trade marks, EU Directive 89/104/EEC of 21 December 1988
Cited by:
Cited – Adidas-Salomon AG and Another v Fitnessworld Training Ltd ECJ 23-Oct-2003
The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect . .
Cited – Mastercard International Incorporated v Hitachi Credit (Uk) Plc ChD 8-Jul-2004
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 06 June 2022; Ref: scu.178698