A fair use defence in trade mark cases:
whether there is (or should be) a fair use
defence to trade mark infringement?
Iain Connor, Partner
Pinsent Masons
Agenda
• Current law
– Trade Marks Directive 2008/95/EC
• Article 5 and 6
– Case law interpreting the TMD
– Guidance from the CJEU in other areas
• Contrast the US position
• Conclusion
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Trade Marks Directive 2008/95/EC
Article 5
Rights conferred by a trade mark
1. 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
[double identity]
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Article 5(1)(b)
(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; the
likelihood of confusion includes the likelihood of association
between the sign and the trade mark.
[Confusion infringement]
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Article (5)(2)
2. Any Member State may also provide 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, or similar to, the trade mark in relation to
goods or services which are not similar to those for which
the trade mark is registered, where the latter has a
reputation in the Member State and where use of that sign
without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the
trade mark.
[extended protection infringement]
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Article 6 - Limitation of the effects of a trade mark
Art 6(1) The trade mark shall not entitle the proprietor to
prohibit a third party from using, in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity,
intended purpose, value, geographical origin, the time of
production of goods or of rendering of the service, or other
characteristics of goods or services;
c) the trade mark where it is necessary to indicate the
intended purpose of a product or service, in particular as
accessories or spare parts;
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In accordance with honest practices
• The caveat to Article 6:
“provided he uses them in accordance with honest
practices in industrial or commercial matters.”
• Eg L’Oreal -v- Bellure failure to comply with the
Comparative Advertising Directive by the use of
comparison lists was regarded as "without due cause"
and so not within the exception to infringement of Art.
6(1)(b) because not "in accordance with honest
practices".
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CJEU’s six conditions (1-5)
Case C-206/01 Arsenal Football plc v Reed, (etc)
• must prove that the following six conditions are satisfied:
– there must be use of a sign by a third party within the
relevant territory
– the use must be in the course of trade
– it must be without the consent of the proprietor
– it must be of a sign which is identical/similar with the
trade mark
– it must be in relation to goods or services which are
identical/similar with those for which the trade mark is
registered; AND … tbc
Use of trade mark
Hölterhoff v Freiesleben Case C-2/00
Jeweller used the sign in question solely to denote the
particular characteristics of the goods he was offering for
sale so that there was no question of the trade mark being
perceived as a sign indicative of the undertaking of origin
Google France -v- Louis Vuitton –use by Google for
technical purposes but NOT for its own commercial
communications
Contrast
Hasbro -v- 123 Hahrmittel
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Descriptive use? Use as a trade mark?
THE EDIBLE PLAY DOUGH!
The sixth condition
• it must affect
• or be liable to affect
• one of the functions of the trade mark (the 6th Condition).
– Origin function
– Investment function
– Advertising function
– Communication function
– Etc
• Is this a fair use defence?
L’Oreal -v- Bellure
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L’Oreal -v- Bellure
• Infringement is limited to cases in which the use affects
or is liable to affect
– at least one of the functions of the trade mark,
including the
• Essential origin function but also
• The functions of
– guaranteeing quality
– communication
– advertising; and
– investment.
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Jacob in the CofA on the CJEU
“My final general comment is this. I believe the
consequence of the ECJ decision is that the EU has a
more "protective" approach to trade mark law than other
major trading areas or blocs. I have not of course studied in
detail the laws of other countries, but my general
understanding is, for instance, that countries with a healthy
attitude to competition law, such as the US, would not keep
a perfectly lawful product off the market by the use of trade
mark law to suppress truthful advertising.”
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Jacob in the CofA on the CJEU (cont.)
As I have said I do not agree with or welcome this
conclusion – it amounts to a pointless monopoly. But my
duty is to apply it. For by the use of the comparison lists
there is clearly free-riding of the sort condemned by the
Court. So if it had been necessary I would have held that
there was also Art. 5(2) infringement.
No guidance from the CJEU on what was “unfair” about
producing an imitation.
Therefore – limitations on a fair use defence?
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“in relation to” and the sixth condition
Adam Opel v Autec c-48/05
• Use of the Opel trade mark on toy replica cars was not
use “in relation to” motor vehicles but was use “in
relation to” toys
• However, not for the purposes of distinguishing the origin
of the goods and so no effect on the origin function
• Customers of the toys understood to the use to be a
faithful representation of the motor vehicle
• Question of fact on the evidence in each case as to how
this will be perceived – is this a “fair use defence”?
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Google France - Average Internet User test
• does not enable reasonably well-informed and
reasonably observant internet users,
• or enables them only with difficulty,
• to ascertain whether the goods or services
concerned by the advertisement originate from
the proprietor of the trade mark or
• an undertaking economically linked to that
proprietor or,
• on the contrary, originate from a third party
Interflora -v- M&S
Court of Appeal - transparency test
• CJEU has, in its decision in Google France enunciated a
new test to assess whether the accused use has
adversely affected, or is liable adversely to affect, the
origin function of a trade mark at least in the context of
keyword advertising cases.
• The test is founded upon certain generic characteristics
of adverts of the kind in issue and a recognition by the
CJEU of the need for transparency about the origin of
the goods and services so advertised.
• This is the “transparency test” re the origin function
Court of Appeal – the transparency test
• First – is the average internet user test satisfied
• Second - the trade mark owner is entitled to prevent
adverts which internet users think come from him or
which suggest that there is a material link to him.
• Third, if the advert, though not suggesting an economic
link, is vague as to the origin of the goods or services
in question so that such internet users are unable to
determine, on the basis of the advertising link and the
commercial message attaching to it, whether the
advertiser is a third party or, on the contrary, is
economically linked to the proprietor
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CJEU - Johan Deckmyn C-201/13
• 1. Is the concept of 'parody' an independent concept in
European Union law?
• 2. If so, must a parody satisfy the following conditions
or conform to the following characteristics:
• - the display of an original character of its own
(originality);
• - and such that the parody cannot reasonably be
ascribed to the author of the original work;
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CJEU - Johan Deckmyn
• - be designed to provoke humour or to mock,
regardless of whether any criticism thereby expressed
applies to the original work or to something or someone
else;
• - mention the source of the parodied work?
• Will this reasoning find its way into trade mark law and
form part of a fair use defence?
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U.S. - Trademark Fair Use
• Not used as a trademark
• Descriptive of goods or services or their geographic
origin
• Used fairly and in good faith
Lanham Act at 15 U.S.C. § 1115(b)(4)
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U.S. - Trademark Fair Use
• Applies even if plaintiff’s mark is valid
• Applies even if some degree of confusion results
• But confusion is probative of whether defendant’s use is
“objectively fair”
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111 (2004) (MICROCOLOR)
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U.S. - New Kids on the Block Case
New Kids on the Block v. News America Publishing, Inc.,
971 F.2d 302 (9th Cir. 1992).
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Introduced a new fair use defence
• Facts
– Newspapers using the NKOTB trade mark to test the
band’s popularity
– Argued can only run a poll if NKOTB trade mark is
used
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U.S. - Trademark Nominative Fair Use
• Is the product or service not readily identifiable without
use of the mark?
• Did the defendant use only so much of the mark as is
reasonably necessary to identify the product or
service?
• Did the defendant do anything to, in conjunction with the
mark, suggest sponsorship or endorsement by the
mark holder?
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U.S. – Trademark Parody
“The following shall not be actionable as dilution … any fair
use other than as a designation of source for the person’s
own goods or services, including use in connection with …
identifying and parodying, criticizing or commenting upon
the famous mark owner or the goods or services of the
famous mark owner.”
15 U.S.C.§1125(c)(3)(a)(ii)
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Louis Vuitton Malletier S.A. v. Haute Diggity Dog,
LLC, 507 F.3d 252 (4th Cir. 2007).
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Trade mark infringement? - no
“In sum, while a defendant’s use of a parody as a mark
does not support a "fair use" defense, it may be considered
in determining whether the plaintiff-owner of a famous mark
has proved its claim that the defendant’s use of a parody
mark is likely to impair the distinctiveness of the famous
mark.”
“In short, as Haute Diggity Dog’s "Chewy Vuiton" marks are
a successful parody, we conclude that they will not blur the
distinctiveness of the famous mark as a unique identifier of
its source.”
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Trade marks and parody –
Esso v Greenpeace
• Esso sought an interim injunction against Greenpeace to
prevent them from using the parodied ‘E$$O’ trade mark
on its website
• The ‘Stop Esso’ campaign - a boycott of the company in
light of their environmental policies
• France (but under EU trade mark law) held:
– Constitutional principle of free speech
– Not been aimed at promoting
products/services
– While controversial …
– ...it was irrelevant to the commercial sector
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Comparative Advertising
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Somersby Cider
Calsberg parodying the Apple store
“One click and you are connected”
“Launch day, London, 2013”
“Single core, dual core.”
“Works effectively in direct sunlight”
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dixons.co.uk v .....?
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dixons.co.uk v .....?
“Get off at Knightsbridge, visit the discerning shopper’s
fave department store, ascend the exotic staircase and
let Piers in the pinstripe suit demonstrate the magic of
the latest high-definition flatscreen then go to
dixons.co.uk and buy it”
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BA vs Ryanair – old school or tbc?
BA -v- Ryanair
• Use of a trade mark
• Comparative advertising directive
– Is it objectively justifiable?
• Possibly …
• But
– Is it detrimental to the trade mark?
Conclusion
• The Trade Mark Directive does not expressly provide for
a fair use defence.
• However, in developing the sixth condition, the CJEU
appears to have created what may be analogous to a fair
use defence
• In doing so, the “non-common law” CJEU has developed
a body of case law which wouldn’t look out of place in
the US.
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Thank you
• Any questions?
Iain Connor
Partner
Intellectual Property
T: 020 7418 8260
M: 07827 409193
E: [email protected]
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