Use of mark to inform consumers of compatibility may be permissible

European Union

In Gillette Company v LA-Laboratories Ltd Oy, Advocate General Tizzano has issued an opinion clarifying the interpretation of Article 6(1)(c) of the Community Trademark Directive in relation to the use of a protected trademark on a third party's goods to indicate that they are intended to be compatible with the mark owner's original product.

The case centred on a claim by Gillette Company requesting that the Finnish courts issue an order restricting Finnish competitor LA-Laboratories Ltd Oy (LA) from using Gillette's protected trademarks to indicate that LA's goods (razor blades) were accessories or spare parts compatible with Gillette's principal product (razor). The Finnish Supreme Court referred the question as to whether LA's use of the mark was unlawful pursuant to Community trademark law to the European Court of Justice. Advocate General Tizzano has now issued a preliminary opinion in the case.

Tizzano made the following general findings:

  • Assessments to determine if a third party's use of a protected trademark on its goods is permitted, should be the same no matter whether the goods are spare parts, accessories or stand alone products.

  • A third party uses a protected mark in accordance with honest practices in commercial matters pursuant to Article 6(1)(c) of the Community Trademark Directive if (i) the third party does not create an impression that there is a connection between it and the trademark owner, and (ii) it is not taking unfair advantage of the reputation of the mark. The fact that a third party sells similar products to a mark owner and affixes that mark to them does not necessarily mean that the third party is asserting that the quality of its goods is comparable to the goods sold by the mark owner.

  • The fact that a third party using another's trademark on goods that are accessories or spare parts also markets its own competing stand alone product is a significant factor when evaluating whether the use of the mark is in accordance with honest practices in industrial or commercial matters.

  • Use of another party's trademark is necessary where there are no other means to inform consumers about the compatibility of the third party's goods and those of the mark owner.

  • There is no need, under Article 6(1)(c), to determine whether the product at issue is a stand alone product or a spare part because no goods or services can be excluded from the scope of application of this article.

Tizzano suggested a less restrictive reading of Article 6(1)(c) than that proposed by Gillette. According to Gillette, the use of another's mark by a third party is only necessary when restraining such use would prevent the third party from entering the market. Gillette argued that as LA could enter the market by selling razor blades (spare parts) for its own stand alone razor, its use of Gillette's mark was unnecessary. In Tizzano's opinion, however, use of another party's trademark is necessary when it is the only way to communicate information on the uses of the product to consumers. He stated that use of a third party's mark may not be necessary if there are other means to inform consumers about compatibility of razor blades with razors. If, for example, there exist general technical standards with which consumers are familiar, there would be no need to use another party's trademarks. However, it is perhaps worth noting that this does not appear to be the case with razors and razor blades.

Jukka Palm, Berggren Oy Ab, Helsinki

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