Is it considered as a trademark infringement if a similar sign as the trademark has been put on products which are different from those for which the trademark is registered? Can the trademark-owner prevent such a usage? The European Court of Justice answered those questions in his very fresh judgement which revolved around a toothpaste. In our article we summarize the decision of the Court.
1. The ÖKO-TEST trademark
Probably you have already seen such products on the shelves which bear the above sign. These products have been rated as appropriate on the test of the German firm ÖKO-Test Verlag.
In such cases, against the payment of a particular sum and based on a licensing agreement, the ÖKO-Test Verlag gives authorization to the manufacturer to put the ÖKO-TEST trademark on the product and use this rating until ÖKO-Test Verlag carries out another test.
The ÖKO-TEST is registered as a European Union trademark and as a German trademark for printed matter and for services that consist in conducting tests and providing consumer information and consultancy.
2. The problematic toothpaste
The toothpaste „Aminomed” of the company Dr. Liebe was rated as „sehr gut” (very good) by ÖKO-Test Verlag in 2005. Dr. Liebe entered into a licensing agreement with ÖKO-Test Verlag and produced the toothpaste with a packaging which contained the ÖKO-TEST „sehr gut” quality label.
In 2008 ÖKO-Test Verlag carried out another test of toothpastes and unfortunately Aminomed was not rated as being appropriate anymore.
Despite the above fact Dr. Liebe used the ÖKO-TEST trademark even in 2014 which ÖKO-Test Verlag did not really like. That is why he started a trademark infringement procedure against Dr. Liebe.
3. The legal background
Based on the applicable European Union regulation the trademark owner may start actions against the infringer in the below cases.
4. The „toothy” questions
During the infringement procedure between ÖKO-Test Verlag and Dr. Liebe the court decided that he requests from the European Court of Justice the interpretation of the above provisions.
The first question of the German court was whether the trademark-owner of a quality label could oppose to the usage of a sign identical with or similar to the trademark on different products than those for which the trademark is registered.
In case the Court would answer the above question in the negative, the German court asked whether the trademark-owner of a quality label with a reputation could oppose to the usage of a sign identical with or similar to the trademark on different products than those for which the trademark is registered.
5. The decision of the Court
The answer of the Court to the first question was that in principle the EU trademark offers protection in relation with products which are identical with or similar to those for which the trademark is registered.
In fact, on this basis the ÖKO-Test Verlag could start actions against its competitors who put the ÖKO-TEST trademark or a similar sign on printed matter. Nevertheless, on this basis ÖKO-Test Verlag could not prevent Dr. Liebe from putting the ÖKO-Test trademark on a toothpaste.
However, ÖKO-Test Verlag could oppose to the usage of the ÖKO-TEST trademark by Dr. Liebe on another basis, given the fact that the trademark has a reputation in Germany, as it is known by a significant part of the relevant public in Germany.
If ÖKO-Test Verlag can prove that the usage of the ÖKO-TEST trademark by Dr. Liebe infringes or takes unfair advantage of the reputation or distinctive character of the trademark, and Dr. Liebe cannot prove that he has due cause to use the trademark, then ÖKO-Test Verlag could prevent the further usage of the ÖKO-TEST trademark on the Aminomed toothpaste.
The decision of the Court confirmed that basically the trademark offers protection in relation with products identical with or similar to those for which the trademark is registered. Nevertheless, in case of trademarks having a reputation the trademark-owner could start actions in relation with signs put on different products if he can prove that the usage infringes or takes unfair advantage of the reputation or distinctive character of the trademark.
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