Trade Marks: Scope of Art 5 (1) of Trade Mark Directive

Having just advised on the very point earlier this week, I see that the Cour d'Appel of Nancy has just referred the following question to the European Court of Justice under art 5 (1) of the Trade Mark Directive in S.A.R.L. Celine v S. A. Celine:

"Must Article 5(1) of Directive (EC) No. 89/104 be interpreted as meaning that the adoption, by a third party without authorisation, of a registered word mark, as a company name, business name or style in connection with the marketing of identical goods, amounts to use of that mark in the course of trade, which the proprietor is entitled to stop by reason of his exclusive rights?"The article, for those who don't know the directive off by heart, 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."

Under the old law adoption of a corporate name would not have infringed although there might was sometimes an action for passing off. I can see all sorts of problems if the ECJ finds that such adoption does amount to infringement I can see all sorts of supplemental issues. Must the defendant company make only the specified goods and if not what happens if the specified goods account for a small proportion of the company's turnover. It is too late in the evening for me to go into all those issues now but I shall certainly come back to this topic. Ciao! as they say in Buenos Aires (and Italy).


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