Journal of Intellectual Property Law & Practice Advance Access originally published online on June 25, 2008
Journal of Intellectual Property Law & Practice 2008 3(8):507-510; doi:10.1093/jiplp/jpn104
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© The Authors (2008). Published by Oxford University Press. All rights reserved
Opel/Autec: does the ECJ realize what it has done?
Legal context: In the European Court of Justice Opel/Autec decision of 2007, the ECJ broadened its rule of reason exception to the exclusive rights granted by Article 5(1)(a) of the Trade marks Directive. The exception appears not to apply in Article 5(2) situation. Also, the decision is essential for qualifying certain trade mark uses falling under different exclusive rights.
Key points: The decision builds on earlier case law, holding that there is only infringement under Article 5(1)(a) when the use by a third party harms one of the functions of the trade mark, in particular the guarantee of origin function. However, it broadens this exception by requiring the public to see a commercial link, thus indirectly introducing something that looks like a ‘risk of confusion element’ under Article 5(1)(a) of the Directive.
The rule of reason exception appears not to apply in cases where the protection of Article 5(2) of the Directive is invoked.
The earlier ECJ BMW/Deenik decision only has relevance for cases with those exact facts and circumstances; in all other situations, there would be no use in relation to goods or services, meaning that these cases would fall under Article 5(5) of the Directive (‘other use’), which does not contain harmonized trade mark law. Potentially this is an unwanted consequence.
Practical significance: The ECJ added requirements for finding infringement under Article 5(1)(a) of the Directive. Various forms of trade mark use, such as use on the internet (in ‘Adwords’), referring use, and use in comparative advertising, may then fall outside the scope of Articles 5(1) and 5(2). In such cases, the trade mark is arguably not used in identifying the products of the advertising party, but those of the trade mark holder.
Key Words: When invoking Article 5(1)(a) of the Directive, one should also show that the attacked use damages one of the functions of a trade mark, and in particular that the public links the sign to the (undertaking of the holder of the) trade mark. • ‘Use in relation to goods or services’ in Article 5(1)(a) actually means ‘use in relation to the goods or services of the party using the sign’, in cases not similar to the BMW/Deenik situation. • Use of a trade mark on the internet, referring use and use in comparative advertising, as a result of Opel/Autec may fall outside the scope of Article 5(1) and 5(2), and thus outside the scope of harmonised trade mark law.
* De Brauw Blackstone Westbroek, the Netherlands. Email: maarten.santman{at}debrauw.com