Anti-dilution protection extended by ECJ

In Davidoff & Cie SA v Gofkid Ltd, the European Court of Justice (ECJ) appears to have extended the Community Trademark Directive's anti-dilution protection to the use of identical or similar signs on similar goods as well as dissimilar goods, regardless of confusion, if the infringement of a well-known mark is at issue.

Davidoff is the registered owner of the German mark DAVIDOFF in relation to, among other things, tobacco products and gentlemen's accessories. Some time after Davidoff registered its mark, Gofkid registered the German mark DURFFEE in the same script, covering similar goods.

Davidoff brought trademark infringement proceedings in Germany against Gofkid, arguing that Gofkid had registered DURFFEE to take advantage of the reputation attached to DAVIDOFF in order to sell lower quality products, thus diluting the reputation of Davidoff's mark. Having been unsuccessful at first instance and on appeal, the case reached the German Federal Supreme Court.

The Supreme Court was asked to analyze allegedly inconsistent articles of the Community Trademark Directive. Article 5(1)(b) states that infringement of a mark by a similar sign occurs where (i) the latter is used on similar or identical goods, and (ii) there exists a likelihood of confusion. However, Article 5(2), which provides well-known marks with anti-dilution protection, does not have the 'likelihood of confusion' requirement. It applies to the use of an identical or similar sign on goods that are not similar to those of the trademark owner.

The Supreme Court held that the two marks are similar and that the goods on which the DURFFEE mark was used were in some cases very similar to Davidoff's products. However, there was no evidence, said the court, that, pursuant to Article 5(1)(b), the two marks were likely to cause confusion in the minds of the public. However, the court was unsure as to the scope of protection conferred by Article 5(2) and referred the question of alleged inconsistency to the ECJ.

In its decision, the ECJ appears to have extended anti-dilution protection to cover the use of identical or similar signs on similar goods as well as dissimilar goods, regardless of the likelihood of confusion, if the infringement of a well-known mark is at issue. It stated that Article 5(2) is to be interpreted as:

"entitling the member states to provide specific protection for well-known registered trademarks in cases where a later mark or sign, which is identical with or similar to the registered mark, is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark."

Matthew Harris and Paul England, Herbert Smith, London