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Monteagudo, Montiano; Porxas, Núria --- "Repairs and other Specialist Services in the Light of the ECJ’s BMW Ruling" [2006] ELECD 237; in Phillips, Jeremy (ed), "Trade Marks at the Limit" (Edward Elgar Publishing, 2006)

Book Title: Trade Marks at the Limit

Editor(s): Phillips, Jeremy

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427382

Section: Chapter 9

Section Title: Repairs and other Specialist Services in the Light of the ECJ’s BMW Ruling

Author(s): Monteagudo, Montiano; Porxas, Núria

Number of pages: 14

Extract:

9. Repairs and other specialist services in
the light of the ECJ'S BMW ruling
Montiano Monteagudo and Núria Porxas

1. INTRODUCTION
The trade mark right, or, more specifically, the ius prohibendi (`right to
prohibit') that constitutes its negative content, is not absolute. Apart from the
doctrine of exhaustion of rights, there are additional reasons for the exis-
tence of other permitted uses of third party trade marks. These reasons are
based on the need to protect certain interests that coexist with, but simulta-
neously oppose, the interests of the trade mark owner and that are essentially
linked to the proper function of the market to ensure transparency through
the provision of complete and adequate information. Thus it has become
necessary to adopt measures that make it possible for these opposing inter-
ests to coexist. To this end, trade mark law has established certain limitations
on the trade mark owner's right to prohibit or exclude conduct that a priori
infringes the exclusive scope of the trade mark.
In this regard Article 17 of the TRIPs Agreement1 allows the establish-
ment of limited exceptions to the rights conferred by a trade mark, such as
the fair use of descriptive terms, provided that such exceptions take account
of the legitimate interests of the owner of the trade mark and of third parties.
More specifically, Article 6(1) of the Council Directive 89/1042 (the
`Directive') states that the trade mark shall not entitle the proprietor to
prohibit a third party ...