Industria de Diseño Textil, SA (Inditex) v Buongiorno Myalert SA.

• Jurisdiction: European Union
• ECLI: ECLI:EU:C:2024:17
• Date: 11 January 2024
• Docket Number: C-361/22
• Celex Number: 62022CJ0361
• Court: Court of Justice (European Union)

Provisional text

JUDGMENT OF THE COURT (Fourth Chamber)

11 January 2024 (*)

(Reference for a preliminary ruling – Trade marks – Directive 2008/95/EC – Article 6(1)(c) – Limitation of the effects of the trade mark – Use of a trade mark to indicate the intended purpose of a product or service – Directive (EU) 2015/2436 – Article 14(1)(c))

In Case C‑361/22,

REQUEST for a preliminary ruling under Article 267 TFEU from the Tribunal Supremo (Supreme Court, Spain), made by decision of 12 May 2022, received at the Court on 3 June 2022, in the proceedings

Industria de Diseño Textil SA (Inditex)

v

Buongiorno Myalert SA,

THE COURT (Fourth Chamber),

composed of C. Lycourgos, President of the Chamber, O. Spineanu-Matei (Rapporteur), J.-C. Bonichot, S. Rodin and L.S. Rossi, Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after considering the observations submitted on behalf of:

– Industria de Diseño Textil SA (Inditex), by F. Arroyo Álvarez de Toledo and R. Bercovitz Álvarez, abogados,

– Buongiorno Myalert SA, by J.J. Marín López, abogado, and A. Vázquez Pastor, procuradora,

– the Spanish Government, by I. Herranz Elizalde, acting as Agent,

– the European Commission, by P. Němečková and J. Samnadda, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 7 September 2023,

gives the following

Judgment

1 This reference for a preliminary ruling concerns the interpretation of Article 6(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).

2 The request has been made in proceedings between Industria de Diseño Textil SA (Inditex) and Buongiorno Myalert SA (‘Buongiorno’) concerning an alleged infringement of rights conferred by a national trade mark owned by Inditex by reason of the alleged use by Buongiorno of a sign identical to that trade mark without the consent of Inditex.

Legal context

European Union law

First Directive 89/104

3 Article 5 of First Directive 89/104, entitled ‘Rights conferred by a trade mark’, stated, in paragraphs 1 and 2:

‘1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’

4 Article 6 of First Directive 89/104, entitled ‘Limitation of the effects of a trade mark’, provided, in paragraph 1:

‘The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,

…

(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;

provided he uses them in accordance with honest practices in industrial or commercial matters.’

5 First Directive 89/104 was repealed and replaced by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), which came into force on 28 November 2008.

Directive 2008/95

6 Article 5 of Directive 2008/95, entitled ‘Rights conferred by a trade mark’, provided, in paragraphs 1 and 2:

‘1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.

2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’

7 Article 6 of Directive 2008/95, entitled ‘Limitation of the effects of a trade mark’, provided, in paragraph 1:

‘The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

…

(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;

provided he uses them in accordance with honest practices in industrial or commercial matters.’

8 Directive 2008/95 was repealed and replaced, with effect from 15 January 2019, by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1).

Directive 2015/2436

9 Article 14 of Directive 2015/2436, entitled ‘Limitation of the effects of a trade mark’, states, in paragraphs 1 and 2:

‘1. A trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

…

(c) the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of the trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.’

Spanish law

10 In the version transposing Article 5 of First Directive 89/104, Article 34 of Ley 17/2001 de Marcas (Law 17/2001 on trade marks) of 7 December 2001 (BOE No 294 of 8 December 2001, p. 45579; ‘the Law on trade marks’) provided:

‘1. The registration of a trade mark shall confer on the proprietor exclusive rights to use it in the course of trade.

2. The registered trade mark proprietor shall be entitled to prohibit all third parties not having his or her consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign which, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services, gives rise to a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

(c) any sign which is identical with, or similar to, goods or services which are not similar to those for which the trade mark is registered, where that trade mark is well known or has a strong reputation in Spain and the use of the sign without due cause may indicate a connection between those goods or services and the trade mark proprietor or, generally, where that use takes unfair advantage of, or is detrimental to, the distinctive character, well-known nature or strong repute of the registered trade mark.’

11 In its original version, Article 37(1)(c) of the Law on trade marks, which transposed Article 6(1)(c) of First Directive 89/104 into Spanish law, stated:

‘The rights conferred by the trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, the elements stated below, provided that that use is in accordance with honest practices in industrial or commercial matters:

…

(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.’

12 Article 37 of the Law on trade marks was amended by Real Decreto-ley 23/2018 de transposición de directivas en materia de...