The European Court of Justice has just held that in determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, a court must take into account the perception of the public at the time when the allegedly infringing sign began to be used rather than rather than the time the registered mark first began to be used.
This was a reference under art 234 of the Treaty of Rome from the Belgian Cour de Cassation in a trade mark infringement case originally launched by Levi Strauss & Co. against Casucci SpA in the Brussels Commercial Court. The battle was over stitching on the rear pocket of a pair of jeans. The claimant had registered what it called the “seagull” design resembling a lance-corporal stripe’s in the British army in Benelux in respect of clothes within class 25 in 1980. Some years later, the defendant marketed jeans with a stitching device on the back pocket which looked rather more like one of the stripes of Sergeant Bilko. The claim failed at first instance and on appeal in part because the court found that a stitching pattern had ceased to be distinctive. On further proceedings in the Court de Cassation the claimant argued that the seagull stitching pattern had been highly distinctive when it was first used and that that the court should disregard similar stitching patterns of other jeans manufacturers.
That argument was enough to persuade the court to refer the following questions to Luxembourg:
“(1) For the purposes of determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, in accordance with Article 5 (1) of Directive 89/104, must the court take into account the perception of the public concerned at the time when use was commenced of the mark or similar sign which allegedly infringes the trade mark?
(2) If not, may the court take into account the perception of the public concerned at any time after the commencement of the use complained of? Is the court entitled in particular to take into account the perception of the public concerned at the time it delivers the ruling?
(3) Where, in application of the criterion referred to in the first question, the court finds that the trade mark has been infringed, is it entitled, as a general rule, to order cessation of the infringing use of the sign?
(4) Can the position be different if the claimant’s trade mark has lost its distinctive character wholly or in part after commencement of the unlawful use, but solely where that loss is due wholly or in part to an act or omission by the proprietor of that
The Court’s response was as follows:
1. Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.
2. Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor’s rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease us of that sign.
3. It is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked.”
The message of all that seems to be use it or lose it, but that will be the subject of another post mes chers amis et confreres.