Use of a trade mark with descriptive purposes : Judgment C-2/00 of the ECJ
26.06.2002
The Court of Justice of the European Community delivered a judgment C-2/00 relative the use of a trade mark with descriptive purposes in the course of trade.
May, the 14th of 2002, the Court of Justice of the European Community delivered a judgment C-2/00 relative the use of a trade mark with descriptive purposes in the course of trade.Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks provides:"The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark." The dispute that led the Oberlandesgericht Düsseldorf (Düsseldorf) to referr for preliminary ruling is as following : Mr F. is the owner of two trade marks, "Spirit Sun" and "Context Cut", covering, respectively diamonds and precious stones, both presenting particular cuts. Mr H. deals in precious stones of all kinds, which he cuts himself or which he purchases from other dealers. During commercial negotiations, Mr H. offerred for sale some stones which he described as beeing "in the Spirit Sun cuts". No trade mark was reproduced on the delivery note. Does such a use of a trade mark correspond to uses violating the exclusive right conferred to the proprietor of the trade mark ?According to the ECJ, this use does not infringe any of the interests which Article 5(1) is intended to protect. In fact:- the third party refers to the trade mark in the course of commercial negotiations with a potential customer, who is a professional jeweller, - the reference is made for purely descriptive purposes, namely in order to reveal the characteristics of the product offered for sale to the potential customer, who is familiar with the characteristics of the products covered by the trade mark concerned, - the reference to the trade mark cannot be interpreted by the potential customer as indicating the origin of the product. Thus, the ECJ pronounced that:Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the proprietor of a trade mark cannot rely on his exclusive right where a third party, in the course of commercial negotiations, reveals the origin of goods which he has produced himself and uses the sign in question solely to denote the particular characteristics of the goods he is offering for sale so that there can be no question of the trade mark used being perceived as a sign indicative of the undertaking of origin.We can notice in its opinion that the advocate general insisted on the fact that, in the present case, both interlocutors were fully aware that the terms were not intend to indicate the origin of the goods (which is the purpose of a trade mark) but only their characteristics. Moreover, this awareness excluded any misleding.Thus, this is not in contradiction with Article L. 713-2a) of the French law which specifically prohibits the "reproduction, use or affixing of a mark, even with the addition of words such as: "formula, manner, system, imitation, type, method"".
