lovells studio legale trademark licences and assignment parallel imports comparative advertising...
TRANSCRIPT
Lovells Studio Legale
Trademark Licences and Assignment Parallel importsComparative advertising
Prof. Avv. Luigi Mansani
Hogan Lovells - Studio Legale
Università di Parma
12 November 2010
Turin, Master of Laws in Intellectual Property - WIPO
Licenses
• Art. 21 TRIPs• Art. 8 EC Directive 89/104
Art. 21 TRIPs
Members may determine conditions on licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.
Art. 8 EC Directive 89/104
1. A trade mark may be licensed for some or all the goods or services for which it is registered and for the whole or part of the Member State concerned. A license may be exclusive or non-exclusive.
2.The proprietor of a trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to:
Art. 8 EC Directive 89/104
• its duration• the form covered by the registration in which the trademark
may be used• the scope of the goods or services for which the licence is
granted• the territory in which the trademark may be affixed• the quality of the goods manufactured or the services
provided by the licensee
Quality control
Is it necessary a quality control by the licensor on the licensee’s products or services?
• Art. 23 c.p.i. (I)• § 11.1.1 WZG (D)• § 35 TML (S); § 36 TML (DK, SF,N)• Sec. 28 TM Act (UK)• E, GR, F, B, NL, LUX• Sec. 5 Lanham Act (USA)
Ideal-Standard (ECJ June 22, 1994, C-9/93)
37. As it was held in HAG II: "For the trade mark to be able to fulfil [its] role, it must offer a guarantee that all goods bearing it have been produced under the control of a single undertaking which is accountable for their quality" (paragraph 13). In all the cases mentioned, control was in the hands of a single body: the group of companies in the case of products put into circulation by a subsidiary; the manufacturer in the case of products marketed by the distributor; the licensor in the case of products marketed by a licensee. In the case of a licence, the licensor can control the quality of the licensee' s products by including in the contract clauses requiring the licensee to comply with his instructions and giving him the possibility of verifying such compliance. The origin which the trade mark is intended to guarantee is the same: it is not defined by reference to the
manufacturer but by reference to the point of control of manufacture.
Ideal-Standard (ECJ June 22, 1994, C-9/93)
38. It must further be stressed that the decisive factor is the possibility of control over the quality of goods, not the actual exercise of that control. Accordingly, a national law allowing the licensor to oppose importation of the licensee' s products on grounds of poor quality would be precluded as contrary to Articles 30 and 36: if the licensor tolerates the manufacture of poor quality products, despite having contractual means of preventing it, he must bear the responsibility. Similarly if the manufacture of products is decentralized within a group of companies and the subsidiaries in each of the Member States manufacture products whose quality is geared to the particularities of each national market, a national law which enabled one subsidiary of the group to oppose the marketing in the territory of that State of products manufactured by an affiliated company on grounds of those quality differences would also be precluded. Articles 30 and 36 require the group to bear the consequences of its choice.
Assignment
• No provisions in the EC Directive 89/104• TRIPs: Freedom to transfer the trademark with
or without the transfer of the related business• Art. 17 EC Regulation 40/94
Art. 17 (Transfer)
1. A CTM may be transferred, separately from any transfer of the undertaking, in respect of some or all the goods or services for which it is registered.
(…)
4. Where it is clear from the transfer documents that because of the transfer the CTM is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered , the Office shall not register the transfer unless the successor agrees to limit the registration of the CTM to goods or services in respect of which it is not likely to mislead.
40. (If) the trade mark has been assigned, for one or several Member States only, to an undertaking which has no economic link with the assignor, (…)41. (t)hat situation must be clearly distinguished from the case where the imported products come from a licensee (…): a contract of assignment by itself, that is in the absence of any economic link, does not give the assignor any means of controlling the quality of products which are marketed by the assignee and to which the latter has affixed the trade mark.
Ideal-Standard
Parallel imports
• Exhaustion of IPR• First sale doctrine• Origin function of trademarks • Art. 7.1 EC Directive 89/104• Art. 13.1 EC Regulation 40/94
Art. 7 EC Directive 89/104(Art. 13 EC Regulation 40/94)
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the EU under that trade mark by the proprietor or with his consent.
2.Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of goods is changed or impaired after they have been put on the market.
Bristol Myers/Paranova (C-427/93)
40. Article 7 of the directive, like Article 36 (now 30) of the Treaty, is intended to reconcile the fundamental interest in protecting trade mark rights with the fundamental interest in the free movement of goods within the common market, so that those two provisions, which pursue the same result, must be interpreted in the same way.
International vs. EU exhaustion
• Directive - Proposal (1980): whereas 8• Regulation - Proposal (1980): official notes on
art. 11• Opinion of the Economic and Social Committee
(1981)• Opinion of the Parliament (1983)• Directive - Proposal (1984)
For International exhaustion
• Trade mark function• Opinion of Mr. Jacobs (Silhouette)• EFTA Court, Dec. 3, 1997 (MAG)• UK High Court, May 18, 1999 (Davidoff)• NL, DK, CH (Chanel), JAP (Parker), CAN,
Indonesia, SAF, AUS, NZ, Mercosur • TRIPs – GATT (?)• Economic reasons (NERA report)
EU exhaustion: Silhouette
26. The Directive cannot be interpreted as leaving it open to the Member States to provide in their domestic law for exhaustion of the rights conferred by a trade mark in respect of products put on the market in non-member countries.
27. This, moreover, is the only interpretation which is fully capable of ensuring that the purpose of the Directive is achieved, namely to safeguard the functioning of the internal market. A situation in which some Member States could provide for international exhaustion while others provided for Community exhaustion only would inevitably give rise to barriers to the free movement of goods and the freedom to provide services.
Limitations to the exhaustion doctrine
7 (1) The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the EU under that trade mark by the proprietor or with his consent
• Definition of consent• Definition of goods• Definition of putting on the market• Burden of proof
7 (2) Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of goods is changed or impaired after they have been put on the market
• Conditions of goods changed or impaired• Protection of trade mark reputation
Implied consent: Davidoff
• Consent must be expressed in such a way that an intention to renounce those rights is unequivocally demonstrated. This intention will normally be gathered from an express statement of consent. Nevertheless, it 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 unequivocally demonstrate that the proprietor has renounced his rights.
• Consent must be expressed positively; the factors taken into consideration in finding implied consent must unequivocally demonstrate that the trade mark proprietor has renounced any intention to enforce his exclusive rights. It follows that it is not for the trade mark proprietor to demonstrate absence of consent, but rather for the trader alleging consent to prove it.
Mere silence: Davidoff
Implied consent to the marketing within the EEA of goods put on the market outside that area cannot be inferred from the mere silence of the trade mark proprietor. Furthermore, implied consent cannot be inferred from the fact that contractual reservations were not imposed at the time of the transfer of ownership of the goods bearing the mark, or from the fact that the trade mark proprietor has not communicated his opposition to marketing within the EEA or from the fact that the goods carry no warning of a prohibition on their being placed on the market within the EEA.
Individual items: Sebago
19. The rights conferred by the trade mark are exhausted only in respect of the individual items of the product which have been put on the market with the proprietor's consent in the territory there defined. The proprietor may continue to prohibit the use of the mark in pursuance of the right conferred on him by the Directive in regard to individual items of that product which have been put on the market in that territory without his consent.
Peak Holding (C-16/03-2004):Putting products on the market
Article 5(3)(b) and (c) of the Directive, relating to the content of the proprietor’s exclusive rights, distinguishes inter alia between offering the goods, putting them on the market, stocking them for those purposes and importing them. The wording of that provision therefore also confirms that importing the goods or offering them for sale in the EEA cannot be equated to putting them on the market there.
Peak Holding: Import without sale, Offer for sale
Article 7(1) must be interpreted as meaning that goods bearing a trade mark cannot be regarded as having been put on the market in the European Economic Area where the proprietor of the trade mark has imported them into the European Economic Area with a view to selling them there or where he has offered them for sale to consumers in the European Economic Area, in his own shops or those of an associated company, without actually selling them.
Class/Colgate (C-405/03-2005): External transit - Offering for sale
• A trade mark proprietor cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the Community previously by that proprietor or with his consent
• ‘Offering’ and ‘putting on the market’ the goods may include, respectively, the offering and sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done and/or the sale is effected while the goods are placed under the external transit procedure or the customs warehousing procedure. The trade mark proprietor may oppose the offering or the sale of such goods when it necessarily entails the putting of those goods on the market in the Community.
Van Doren (C-244/00-2003): Burden of proof
Where a third party against whom proceedings have been brought succeeds in establishing that there is a real risk of partitioning of national markets if he himself bears the burden of proving that the goods were placed on the market in the EEA by the proprietor of the trade mark or with his consent, it is for the proprietor of the trade mark to establish that the products were initially placed on the market outside the EEA by him or with his consent. If such evidence is adduced, it is for the third party to prove the consent of the trade mark proprietor to subsequent marketing of the products in the EEAW
Merck/Paranova (C-433/99-2002): Re-labelling
17. The national court states that Austrian consumers are not accustomed to being offered pharmaceutical products which have clearly been put on the market in another State, where a different language is used. It states that it is perfectly conceivable that a significant number of consumers would regard such a product with the same suspicion as products with untidy or poor-quality packaging. Even attaching labels, in particular in the case before it, would scarcely mitigate that suspicion. If it were to emerge that a significant proportion of consumers would in fact be suspicious in that way, it would be entirely possible, in the view of the national court, to consider that prohibition of the repackaging would contribute to artificial partitioning of the markets.
Boehringer (C-143/00-2002): Repackaging
Replacement packaging of pharmaceutical products is objectively necessary within the meaning of the Court's case-law if, without such repackaging, effective access to the market concerned, or to a substantial part of that market, must be considered to be hindered as the result of strong resistance from a significant proportion of consumers to relabeled pharmaceutical products.
Re-branding: (Pharmacia & Upjohn/Paranova)
37. There is no objective difference between reaffixing a trade mark after repackaging and replacing the original trade mark by another which is capable of justifying the condition of artificial partitioning being applied differently in each of those cases.
Interpretation of Art. 7(2) EC Directive (Bristol Myers/Paranova)
Article 7(2) of Directive 89/104 must be interpreted as meaning that the trade mark owner may legitimately oppose the further marketing of a pharmaceutical product where the importer has repackaged the product and reaffixed the trade mark unless:
• reliance on trade mark rights by the owner would contribute to the artificial partitioning of the markets between Member States;
• the repackaging cannot affect the original condition of the product inside the packaging;
• the new packaging clearly states who repackaged the product and the name of the manufacturer;
• the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark;
• the importer gives notice to the trade mark owner before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.
Boehringer:Prior notice
61. According to the Court's case-law, a parallel importer which repackages a trade-marked pharmaceutical product must give prior notice to the trade mark proprietor that the repackaged product is being put on sale (see Hoffmann-La Roche, paragraph 12). At the request of the trade mark proprietor, the importer must also supply it with a sample of the repackaged product before it goes on sale. That requirement enables the proprietor to check that the repackaging is not carried out in such a way as directly or indirectly to affect the original condition of the product and that the presentation after repackaging is not such as to damage the reputation of the trade mark. It also affords the trade mark proprietor a better possibility of protecting himself against counterfeiting (see Bristol-Myers Squibb and Others, paragraph 78).
Boehr. Ingelheim/Dovelhurst (C-348/04-2007): Failure of Prior notice
• 60 For the trade mark proprietor to be able lawfully to oppose further marketing of a repackaged pharmaceutical product it is sufficient that one of the conditions of Bristol-Myers Squibb and Others is not fulfilled.
• 61 It follows that the trade mark owner’s right to prevent parallel importation of pharmaceutical products which, while not spurious, have been marketed in breach of the requirement to give prior notice to that proprietor is not different from that enjoyed by the proprietor in respect of spurious goods
• 62 In both cases, the products ought not to have been marketed on the market concerned.
• 63 Thus, a national measure under which, where a parallel importer has marketed goods which are not spurious without giving prior notice to the trade mark proprietor, that proprietor is entitled to claim financial remedies on the same basis as if the goods had been spurious, is not in itself contrary to the principle of proportionality. However, it is for the national court to determine the amount of the financial remedies according to the circumstances of each case
Protection of the reputation of the trademark in re-labelling
Ballantine: “A third party who re-labels the product must ensure that the reputation of the trade mark - and hence of its owner - does not suffer from an inappropriate presentation of the relabelled product. The national court must take into account in particular the interest in protecting the luxury image and the considerable reputation they enjoy”.
Protection of the reputation of the trademark in advertising
Dior: “The reseller must endeavour to prevent his advertising from affecting the value of the trade mark by detracting from the allure and prestigious image of the goods and from their aura of luxury, (as it happens where) the use of the trade mark in the reseller's advertising seriously damages the reputation of the trade mark”.
Are those principles a real threat to parallel imports?
Custom retentions and anti-piracy rules are not applicable to goods which have been put on the market everywhere under the trade mark by the proprietor or with his consentE-commerceOn-line auctions(On-line) outletsCirculation of copyrighted materials not included in a physical productThe revenge of International exhaustion?
Comparative advertising
Comparative advertising
Comparative Advertising Directive (97/55 EC) Comparative advertising is defined as "any advertising which explicitly or by implication
identifies a competitor or goods or services offered by a competitor."Comparative advertising shall, as far as the comparison is concerned, be permitted when
the following conditions are met:(a) it is not misleading according to Articles 2 (2), 3 and 7 (1);(b) it compares goods or services meeting the same needs or intended for the same
purpose;(c) it objectively compares one or more material, relevant, verifiable and
representative features of those goods and services, which may include price;(d) it does not create confusion in the market place between the advertiser and a
competitor or between the advertiser's trade marks, trade names, other distinguishing marks, goods or services and those of a competitor;
(e) it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services, activities, or circumstances of a competitor;
(f) for products with designation of origin, it relates in each case to products with the same designation;
(g) it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products.
(h) it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name."
Hartlauer (C-44/01, 8 April 2003) 13. Pippig operates three specialist opticians' shops in Linz (Austria), in which it markets
spectacles. It obtains its supplies from around 60 different manufacturers and has a representative assortment of the collection of each of its suppliers.
14. Hartlauer is a commercial company whose branches, spread throughout the whole of Austria, have optical shelves where the spectacles sold are, in the great majority of cases, of little-known brands and sold at low prices. As far as spectacles of better-known brands are concerned, Hartlauer is not supplied directly by the same suppliers as opticians, but obtains them outside normal distribution channels, particularly by parallel imports.
15. At the beginning of September 1997, Hartlauer circulated throughout the whole of Austria an advertising leaflet stating that 52 price comparisons for spectacles carried out over six years had shown a total price differential of ATS 204 777, or ATS 3 900 on average per pair of spectacles, between the prices charged by Hartlauer and those of traditional opticians. The leaflet claimed in particular that, for a clear Zeiss lens, opticians made a profit of 717%.
16. The advertising leaflet also contained a direct comparison between the price of ATS 5 785 charged by Pippig for Titanflex Eschenbach spectacles with Zeiss lenses and the price of ATS 2 000 charged by Hartlauer for spectacles of the same model but with lenses of the Optimed brand.
17. That price comparison was also announced in advertisements on various Austrian radio and television channels, in which, by contrast with the advertising leaflet, it was not stated that the spectacles compared had lenses of different brands.
Hartlauer 1. Article 7(2) of Council Directive 84/450 precludes the application to comparative advertising of
stricter national provisions on protection against misleading advertising as far as the form and content of the comparison is concerned, without there being any need to establish distinctions between the various elements of the comparison, that is to say statements concerning the advertiser's offer, statements concerning the competitor's offer and the relationship between those offers.
2. Article 3a(1)(a) of Directive 84/450, as amended, must be interpreted as meaning that, whereas the advertiser is in principle free to state or not to state the brand name of rival products in comparative advertising, it is for the national court to verify whether, in particular circumstances, characterised by the importance of the brand in the buyer's choice and by a major difference between the respective brand names of the compared products in terms of how well known they are, omission of the better-known brand name is capable of being misleading.
3. Article 3a(1) of Directive 84/450, as amended, does not preclude compared products from being purchased through different distribution channels.
4. Article 3a(1) of Directive 84/450, as amended, does not preclude an advertiser from carrying out a test purchase with a competitor before his own offer has even commenced, where the conditions for the lawfulness of comparative advertising set out therein are complied with.
5. A price comparison does not entail the discrediting of a competitor, within the meaning of Article 3a(1)(e) of Directive 84/450, as amended, either on the grounds that the difference in price between the products compared is greater than the average price difference or by reason of the number of comparisons made. Article 3a(1)(e) of Directive 84/450, as amended, does not prevent comparative advertising, in addition to citing the competitor's name, from reproducing its logo and a picture of its shop front, if that advertising complies with the conditions for lawfulness laid down by Community law.
O2 (C-533/06, 12 June 2008) • O2 and O2 (UK) carry on business as suppliers of mobile telephone services.• They use bubble images in a host of ways to advertise their services. It is
established that, in the context of mobile phones, consumers associate images of bubbles in water (particularly against a graduated blue background) with O2 and O2 (UK).
• O2 and O2 (UK) are proprietors in particular of two national figurative trade marks, each of which consists of a static picture of bubbles, registered in the United Kingdom in respect of telecommunications apparatus and services (‘the bubbles trade marks’).
• H3G is also a provider of mobile telephone services marketed under the sign ‘3’. It offers in particular a pay-as-you-go service known as ‘Threepay’.
• During 2004, H3G launched an advertising campaign. To that end, it broadcast in particular a television advertisement in which it compared the price of its services with those of O2 and O2 (UK). This televised advertisement (‘the disputed advertisement’) began by using the name ‘O2’ and moving black-and-white bubble imagery, followed by ‘Threepay’ and ‘3’ imagery, together with a message that H3G’s services were cheaper in a specific way.
• O2 and O2 (UK) brought proceedings against H3G for infringement of their bubbles trade marks before the High Court of Justice of England and Wales, Chancery Division.
O2
1. Article 5(1) and (2) of Directive 89/104 must be interpreted to the effect that the proprietor of a registered trade mark is not entitled to prevent the use by a third party of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions, laid down in Article 3a(1) of Directive 84/450, under which comparative advertising is permitted.However, where the conditions required in Article 5(1)(b) of Directive 89/104 to prevent the use of a sign identical with, or similar to, a registered trade mark are met, a comparative advertisement in which that sign is used cannot satisfy the condition, laid down in Article 3a(1)(d) of Directive 84/450, as amended by Directive 97/55, under which comparative advertising is permitted.
2. Article 5(1)(b) of Directive 89/104 is to be interpreted as meaning that the proprietor of a registered trade mark is not entitled to prevent the use by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark was registered where such use does not give rise to a likelihood of confusion on the part of the public, and that is so irrespective of whether or not the comparative advertisement satisfies all the conditions laid down in Article 3a of Directive 84/450, as amended by Directive 97/55, under which comparative advertising is permitted.
L’Oréal (C-487/07, 18 June 2009) • In the United Kingdom, Malaika and Starion market imitations of fine
fragrances as the ‘Creation Lamis’ range. Starion also markets imitations of fine fragrances as the ‘Dorall’ and ‘Stitch’ ranges.
• In both cases, it is not in dispute that that similarity is unlikely to mislead professionals or the public.
• The ‘Dorall’ range comprises, in particular, the Coffret d’Or perfume, which is an imitation of the Trésor perfume, with the bottle and packaging in which it is sold being slightly similar in appearance to those of the Trésor brand.
• The packaging in which the ‘Stitch’ range is sold is basic in appearance and bears no resemblance to the bottles and packaging of the fragrances marketed by L’Oréal and Others.
• In marketing perfumes in the ‘Creation Lamis’, ‘Dorall’ and ‘Stitch’ ranges, Malaika and Starion use comparison lists which they provide to their retailers and which indicate the word mark of the fine fragrance of which the perfume being marketed is an imitation (‘the comparison lists’).
L’Oréal1. Article 5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair
advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.
2. Article 5(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of a registered trade mark is entitled to prevent the use by a third party, in a comparative advertisement which does not satisfy all the conditions, laid down in Article 3a(1) of Directive 84/450, under which comparative advertising is permitted, of a sign identical with that mark in relation to goods or services which are identical with those for which that mark was registered, even where such use is not capable of jeopardising the essential function of the mark, which is to indicate the origin of the goods or services, provided that such use affects or is liable to affect one of the other functions of the mark.
3. Article 3a(1) of Directive 84/450 must be interpreted as meaning that an advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents ‘goods or services as imitations or replicas’ within the meaning of Article 3a(1)(h). The advantage gained by the advertiser as a result of such unlawful comparative advertising must be considered to be an advantage taken unfairly of the reputation of that mark within the meaning of Article 3a(1)(g).
Google (AdWords)
Google (C-236-8/08, 23 March 2010) 1. Article 5(1)(a) of Directive 89/104 EEC mark must be interpreted as meaning that the proprietor of a
trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with the trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
2. An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.
3. Article 14 of Directive on electronic commerce must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned
