ECJ Radically Expands Anti-dilution Claims

Profession:Herbert Smith

On 9th January 2003, in the case of Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd, the ECJ delivered an unexpected judgment of potentially great significance to holders of trade marks who would seek to protect reputation in those marks against so called 'dilution'. The ECJ held that current anti-dilution measures, which protect well-known trade marks on goods from similar or identical signs being used by third parties on dissimilar goods can be extended to protect use of similar and identical signs on similar goods even where no confusion has resulted.

The facts

Davidoff has the word mark and device, Davidoff, registered in Germany for goods in classes 14 and 34 including various tobacco products and gentlemen's accessories. Gofkid is the proprietor of the word mark and device, Durffee, which was registered in Germany after the Davidoff marks for various goods also in classes 14 and 34. Both marks were in the same script and the distinctive 'D' and 'ff' in the two device marks were virtually identical.

Davidoff brought proceedings in Germany against use of the Durffee mark, which it considered to have been designed deliberately to take advantage of the reputation attached to its own mark in order to sell lower quality products, thus 'diluting' the reputation of its own mark. Having been unsuccessful at first instance and appeal, the case reached the German Federal Court of Justice.

The issue

Under Articles 5(1)(b) and 4(1)(b) of the Directive (equivalent to Sections 10(2) and 5(2) of the Trade Marks Act 1994 in the UK), there will be infringement of a mark by a similar mark where that similar mark is used on similar or identical goods, if there exists a likelihood of confusion on the part of the public between the mark and the similar sign.

The German Federal Court of Justice considered that the two marks were similar and that the goods on which the Durffee mark was used were in some cases similar and in others identical to the Davidoff products. However, the Federal Court was unable to establish at that stage a likelihood of confusion in the minds of the public between the marks for the purpose of satisfying Article 5(1)(b).

However, Article 5(2) of the Directive (equivalent to S.10(3) Trade Marks Act 1994) allows a proprietor to protect a trade mark against use of an identical or similar sign on goods which are not similar to those of the proprietor where (a) the mark to be protected has a reputation; and (b) use of that sign...

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