ECJ On Trade Mark Protection Of Quality Labels

Author:Mr Thibaut D'hulst
Profession:Van Bael & Bellis

On 11 April 2019, the Court of Justice of the European Union (the "ECJ") issued its judgment in the ÖKO-Test Verlag case (C-690/17) on the interpretation of Regulation 207/2009 on the European Union trade mark (the "Trade Mark Regulation") and Directive 2008/95 on the approximation of the laws of the Member States relating to trade marks (the "Trade Mark Directive") in relation to quality labels. In its judgment, the ECJ answered two questions, namely (i) whether putting a sign identical with, or similar to, a trade mark consisting of a quality label on products which are different from those for which the trade mark is registered constitutes a trade mark infringement and (ii) whether the proprietor of a reputed trade mark consisting of a quality label can prevent such use.

ÖKO-Test Verlag publishes and sells a magazine in Germany that provides general consumer information and contains the results of performance and compliance tests carried out by the firm on various products. ÖKO-Test Verlag is proprietor of an EU trade mark, registered for printed matter and for services that consist in conducting tests and providing consumer information and consultancy (the "ÖKO-TEST mark"). Sometimes, ÖKO-Test Verlag grants the right to third parties whose products have been tested to affix its label on those products under a trade mark licence agreement.

The defendant in this case, Dr. Liebe, was granted a trade mark licence in 2005 for its toothpaste. In 2014, ÖKO-Test Verlag learned that Dr. Liebe kept affixing the ÖKO-TEST mark on its toothpaste even though the licence had likely ended (the toothpaste on which the label was affixed was different from that tested in 2005). Hence, ÖKO-Test Verlag brought proceedings before the German courts for trade mark infringement. The Higher Regional...

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