Sunday, June 26, 2011

Is CJEU case-law on Art. 5(1)(a) of TM Directive still in Conformity with TRIPS?

This is just a brief thought I would like to share with my readers. I guess most of you are familiar with the case law of the Court of Justice concerning art. 5(1)(a) [case of so called double indetitity]. This provision says that
The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: 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;
Unlike art. 5(1)(b) [case of double similarity] there is no need to prove any likelihood of confusion when applying art. 5(1)(a) according to the explicit wording of TM directive. However Court of Justice repeteadly requires that even in case of double indetity adverse effect on one of the functions of the mark, whether that be the function of indicating origin or one of the other functions have to be proven (see e.g. para 60 L'Oreal v. Bellure C-487/07, para 16 Hölterhoff C-2/00, para 51 Arsenal C-206/01, para 79 Google France C-236/08). Adding above metioned case-law to art. 5(1)(a) then makes it look like this:
The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: 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 provided that it is liable to have an adverse effect on one of the functions of the mark, whether that be the function of indicating origin or one of the other functions;
So far Court of Justice (para 58 L'Oreal v. Bellure C-487/07, para 48 Hölterhoff C-2/00, para 77 Google France C-236/08) came up with these "other functions":
a) guaranteeing the quality of the goods or services;
b) communication function;
c) investment function;
c) advertising;

My point here is to confront art. 5(1)(a) with art. 16(1) of TRIPS. The latter says:
1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
So the TRIPS actually says that trademark infringement shall be presumed in case of double identity. My understanding is that art. 16(1) of TRIPS requires alleged infringer (defendant) to prove that his use of sign in case of double indetity is not liable to have an adverse effect on one of the functions of the mark, whether that be the function of indicating origin or one of the other functions. Court of Justice and his case-law still remain the burden of proof on the trademark owner (the plaintiff). Is it in conformity with TRIPS? Whats your opinion?

No comments: