ECJ clarifies Article 6(1) defence against GI infringement claim

In Gerolsteiner Brunnen GmbH & Co v Putsch GmbH, the European Court of Justice (ECJ) has ruled that trademark owners cannot stop others from using similar sounding geographical indications where they are used honestly in industrial or commercial matters.

Beverage company Gerolsteiner Brunnen launched proceedings in Germany against Putsch for the alleged infringement of its trademark GERRI. Putsch had been marketing soft drinks bearing the name Kerry Spring, a recognized indication of geographical origin. The drinks were manufactured in County Kerry, Ireland, using water from a spring called Kerry Spring.

The German Supreme Court agreed that the conditions for the likelihood of aural confusion for the purposes of Article 5(1)(b) of the Community Trademark Directive had been met. However, the court was unsure how to interpret Article 6(1)(b), which rules out infringement if the allegedly infringing indication (in this case of geographical origin) was used "in accordance with honest practices in industrial or commercial matters".

The court asked the ECJ to determine whether Article 6(1)(b) was also applicable where indications were used as a trademark, and if so, whether this use was in accordance with honest practices in industrial or commercial matters pursuant to the final clause of Article 6(1).

The drafting history of the directive showed that the original proposal for what eventually became Article 6 laid down the formula that indications could be exempt from infringement provided they were not used as a trademark. However, in the interests of clarity, that formula was replaced by the current proviso regarding honest practice.

Taking this into consideration, the ECJ ruled that whether an indication was used as a trademark could not be regarded as relevant for determining the scope of Article 6. The only test that could determine whether an indication was covered by Article 6 was whether it was used in accordance with honest practice.

The court found that the mere fact that there existed a likelihood of aural confusion between a word mark registered in one member state and an indication of geographical origin from another member state was not sufficient to conclude that the use of that indication fell outside the scope of Article 6, that is, that Putsch's use of the KERRY SPRING indication of origin was infringing Gerolsteiner's GERRI trademark. The ECJ decided that it is up to the national court to carry out an overall assessment of all the relevant circumstances, including in this case the labelling and shape of the relevant bottles, to assess whether the use was in accordance with honest practice - in essence, whether there was unfair competition with the trademark owner.

For background information on this case, see GIs protected against infringement claims, rules advocate general.

Gayle Baker, Ashurst, London