Brussels, 06/02/2014 (Agence Europe) - The holder of a famous trademark can be forced to allow the use of a similar trademark by a third party for “due cause” if it is shown that the third party has used the trademark in good faith before it was lodged.
This is the ruling of the European Court of Justice in case C-65/12 in response to question from the Dutch supreme court over a dispute between German company Red Bull GmbH, which has held the Benelux trademark Red Bull Krating-Daeng (for non-alcoholic canned drinks) since 11 July 1983, and H.J.M. De Vries, which has held the Benelux trademark The Bulldog since 14 July 1983, but used the trademark before that date as the trade name of a hotel and catering business. Red Bull appealed against De Vries' use of the logo. The Bulldog, because of the word “bull”, which damaged the Red Bull trademark and gave unfair benefit to de Vries from Red Bull's reputation. Red Bull says that use of The Bulldog trademark is not a “due cause” under the meaning of EU Directive 89/104/EEC on the use of trademarks to justify its use by De Vries. The Dutch court asked the Court of Justice whether there was a “due cause” when an identical or similar trademark to a famous one was already being used in good faith by a third party before the lodging of the trademark in question.
The Court or Justice says yes. It explains that the legislator intended the term “due cause” to balance protection of the rights of famous trademark holders if they can prove that a third party's trade mark has been taking unfair advantage from the famous logo or trademark, and the interests of other operators, if they can prove that they used the trademark for a right reason. The court says that in order to determine whether the right reasons apply to the use of a trademark before the trademark was lodged, the reputation and public awareness of the trademark needs to be determined (in the present case, it is beyond doubt that The Bulldog has been used for a range of products or services since 1983 or earlier). To determine whether the Dutch company intended to take unfair advantage from the reputation of the lodged trademark, the following need to be taken into account: a) the level of proximity between the products and services for which the trademark was originally used and the product for which the famous trademark has been lodged; and b) the economic and commercial pertinence of use of the trademark for the product in question. In the present case, given the public awareness of The Bulldog and the nature of the products and services for which it has been used, the sale of energy drinks under The Bulldog logo can be seen, the Court says, not as an attempt to take advantage of the fame of Red Bull, but rather as a genuine extension of the range of products and services provided by De Vries, especially since The Bulldog logo was used for energy drinks before the Red Bull trademark became famous. The Court of Justice therefore concludes that a third party has used a logo similar to a famous trademark with 'due cause' if he can demonstrate that he did it in good faith before the lodging of the trademark in question. (FG/transl.fl)