There was a conflict between the registered mark Gerri (for inter alia mineral water) and an alleged infringement ‘Kerry Spring’ for Irish mineral water from the Kerry Spring sold by a company called Kerry Spring Water. The referring court held ‘Gerri’ and ‘Kelly’ confusingly similar (by reason of aural confusion) and that there would be infringement under Art.5.1(b) unless there was an Art. 6.1 defence. Use as a trade mark was not ‘appropriate for determining the scope of Art. 6’. It was enough that ‘Kerry’ was of geographical significance to bring it within the scope of Art. 6, even though it also had some trade mark significance.
‘The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement.’
Citations:
[2004] EUECJ C-100/02
Links:
Jurisdiction:
European
Cited by:
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc CA 20-Oct-2009
The parties had long disputed the use of the trade marks ‘Bud’ and ‘Budweiser’ for their beers. The claimant now said that the defendants had made an abusive registration under the 1994 Act, by requesting a declaration that the registration by the . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 08 June 2022; Ref: scu.192237
