Some trademark protection is a national concern, says ECJ

In Robelco NV v Robeco Groep NV, the European Court of Justice has ruled that, pursuant to the Community Trademark Directive, EU member states may determine the scope of protection granted to signs that are similar or identical to registered trademarks when use of the sign is not for the purpose of distinguishing goods or services.

Robeco Groep, a Dutch financial services company, owns the registered trademark ROBECO in relation to financial services in Benelux countries. It brought an action against Robelco, a Belgian property services company, seeking an order that Robelco desist from using the name 'Robelco' or any other name similar to Robeco Groep's mark. It argued that Robelco's use of that name was in breach of Benelux law based on Article 5(5) of the Community Trademark Directive.

Article 5(5) provides that trademark law harmonizing provisions set out in previous sections do not:

"affect provisions in any member state relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark."

At first instance, the court granted Robeco Groep's application. Robelco appealed and the appellate court held that Benelux trademark law differs from Article 5(5) in that it provides protection against the use of identical signs and similar signs. Accordingly, the court referred a question to the ECJ as to whether Article 5(5) must be interpreted so that national trademark protection only extends to the use of an identical mark, or whether it can protect against the use of a similar mark in circumstances falling within Article 5(5).

The ECJ emphasized that the directive's purpose is to approximate the trademark laws of member states in order to facilitate the free movement of goods and freedom to provide services, but not to make them identical. It ruled that Article 5(5) expressly excludes any reference to the scope of protection afforded to trademarks under national laws when a sign is used other than for the purpose of distinguishing goods or services. Member states are therefore free to adopt, as they see fit, national legislation in this area to protect trademarks against the use of identical or similar marks.

Grace Smith, McCann FitzGerald, Dublin