Keywords
Summary

Keywords

Approximation of laws — Trade marks — Directive 89/104 — Limitation of the effects of a trade mark — Right of the proprietor of a trade mark to prevent the use by a third party of an indication of geographical origin entailing a likelihood of confusion with the trade mark — Condition — Use not in accordance with honest practices in industrial or commercial matters — To be determined by the national court — (Council Directive 89/104, Arts 5(1)(b) and 6(1)(b))

Summary

Article 6(1)(b) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that, where there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication, in the course of trade, of the geographical origin of a product originating in another Member State, the proprietor of the trade mark may, pursuant to Article 5 of the directive, prevent the use of the indication of geographical origin only if that use is not in accordance with honest practices in industrial or commercial matters.

In that connection, it is for the national court to carry out an overall assessment of all the relevant circumstances. Where the trade mark and indication of geographical origin are used for the marketing of bottled drinks, the circumstances to be taken into account by that court would include in particular the shape and labelling of the bottle in order to assess, more particularly, whether the producer of the drink bearing the indication of geographical origin might be regarded as unfairly competing with the proprietor of the trade mark.

see paras 26-27, operative part