Home | Databases | WorldLII | Search | Feedback Edited Legal Collections Data

Smith, Grace --- "Honest Commercial Use in Light of the ECJ’s Gerolsteiner Ruling" [2006] ELECD 239; 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 11

Section Title: Honest Commercial Use in Light of the ECJ’s Gerolsteiner Ruling

Author(s): Smith, Grace

Number of pages: 10

Extract:

11. Honest commercial use in light of the
ECJ's Gerolsteiner Ruling
Grace Smith
. . . Article 6 [of Directive 89/104/EEC] seeks to reconcile the fundamental interests
of trade-mark protection with those of free movement of goods and freedom to
provide services in the common market in such a way that trade mark rights are able
to fulfil their essential role in the system of undistorted competition which the
Treaty seeks to establish and maintain . . . (Gerolsteiner Brunnen GmbH & Co. v
Putsch GmbH)1



A BALANCING ACT: THE CONTEXT
In a number of decisions over the past two years, the European Court of
Justice (ECJ) has had to consider the balance struck by Council Directive
89/104 between the restrictive rights granted to trade mark owners and the
overall policies of market freedom and unrestricted competition. Fundamental
to this balance is the idea of `honest practices in industrial and commercial
matters' in Article 6 of the Directive. However, the ECJ's freedom in
approaching Article 6 has been constrained by a number of earlier decisions in
relation to Article 5. The result has been the decision in Gerolsteiner, a case
the conclusions of which are at once difficult to reconcile with the scheme and
purpose of the Directive, yet eminently predictable in light of the Court's
earlier decisions.
Articles 5 to 7 of the Directive provide the logical structure in which any
question of trade mark infringement is to be considered. Article 5 provides the
prima facie test for ...