The Court was considering a dispute between
Gillette and Finnish rival
LA
-Laboratories Ltd Oy over
the unauthorised use of the trade marks "Gillette" and "Sensor" in
a label attached to
LA
-Laboratories' razor blades.
The label read: "All Parason Flexor and Gillette Sensor handles
are compatible with this blade" – Parason Flexor being
LA
-Laboratories' own brand.
Gillette sued, alleging that the label created a connection in
the mind of consumers between the products marketed by
LA
-Laboratories and those of the Gillette companies,
or gave the impression that that company was authorized to use the
Gillette and Sensor marks.
The Finnish Court of First Instance found in favour of Gillette,
following a provision in the
EU
's Trade Mark
Directive. It states that a trade mark owner may not prohibit a
third party from using the mark in trade where it is necessary to
indicate the intended purpose of a product or service, in
particular as accessories or spare parts, provided such use is made
in accordance with honest practices in industrial or commercial
matters.
A razor blade, said the Court of First Instance, is not a spare
part or an accessory, but an essential part of the product.
LA
-Laboratories therefore had no protection under the
Directive.
The Appeals Court disagreed, finding that where, as in this
case, the razor was made up of a handle and replaceable blades, the
blades were spare parts – and therefore no trade mark infringement
had taken place.
The case was appealed again, and the Finnish Supreme Court (the
Korkein oikeus) asked the European Court of Justice for help with
the proper interpretation of the Directive.
The European Court of Justice found that the reference in the
Directive to "spare parts and accessories" was given as an example
only. It did not therefore have to determine the status of a razor
blade.
The Court instead looked at the question of whether the use of
the trade mark was necessary.
The Court said that, to answer this, the national court should
assess whether the use of the trade mark was in practice the only
means of providing the public with comprehensible and complete
information as to the intended purpose of the product.
It should also assess the nature of the public for which the
product marketed by the third party is intended, said the
Court.
The Court then considered the question of "honest use", finding
that this is essentially the expression of a duty to act fairly in
relation to the legitimate interests of the trade mark owner.
According to the Court, use of the trade mark will not be in
accordance with honest practices in industrial and commercial
matters if, for example:
- "it is done in such a manner as to give the impression that
there is a commercial connection between the third party and the
trade mark owner;
- it affects the value of the trade mark by taking unfair
advantage of its distinctive character or repute;
- it entails the discrediting or denigration of that mark;
- or where the third party presents its product as an imitation
or replica of the product bearing the trade mark of which it is not
the owner."
The Court wrote:
"The fact that a third party uses a trade mark of which it is
not the owner in order to indicate the intended purpose of its
product does not necessarily mean that it is presenting that
product as being of the same quality as, or having equivalent
properties to, those of the product bearing the trade mark."
The question is whether the presentation is in accordance with
honest practices in industrial and commercial matters.
Finally, the Court said that where a third party that uses
another's trade mark markets not only a spare part or an accessory
but also the product itself with which the spare part or accessory
is intended to be used, the same conditions apply as regards the
need to indicate the intended purpose of a product or service and
as regards honest use.
The case will now be returned back to the Korkein oikeus for a
final ruling.
