Not without interest is the issue on the validity of the use of trademarks (logos), owned by producers of key products, by spare parts manufacturers.
The Law of Ukraine “On the Protection of Rights to Marks for Goods and Services” does not contain the relevant legal norms regulating this issue. The drafts of the laws, that have been developed with the purpose of implementation of the norms of the European legislation to the Ukrainian one, also do not cover this important issue.
At the same time, the European legislation has been for so long restricting the exclusive right of the trade mark owner to the owned trade mark in case of its use by the third party while producing spare parts and accessories.
Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, to approximate the laws of the Member States relating to trade marks does not prohibit the use of the trade mark for the cases when it is necessary to indicate the intended purpose of a product or service (Article 14(1)(c)). But such a use should meet the following requirements:
– the use is necessary;
– the use made by the third party is in accordance with honest practices in industrial or commercial matters.
The same provision was also contained in the previously adopted EU Directives relating to trade marks – 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 and First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.
How to determine whether the use of the trade mark does meet the requirements foreseen by the Directive? And what should be the criteria for the definitions of “necessity” and “honesty”?
Сriteria have been established by the European court practice
Such criteria have been established by the European court practice.
The European Court of Justice indicated in the case № C-228/03 that the use of the trade mark is necessary where such use in practice constitutes the only means of providing the public with comprehensible and complete information on the intended purpose of the product or service.
For example, the use of a logo or stylized trade mark does not constitute the only means of providing the public with information on the intended purpose of the product. The European court practice proceeds on the basis that only word trademarks should be used when it is necessary to indicate the non-owned brand.
The same position is reflected in the judgments of the Supreme Court of Austria from 15.12.2015 in the case № 4 Ob 211/15f and the Supreme Court of the Republic of Poland in the case № I CSK 327/14 relating to the use of logos MAZDA on advertisement boards of maintenance garage and automobile dealership.
The same opinion was expressed in the year of 2011 by the Supreme Court of Germany in the case № 14 I ZR 33/10 relating the use of Volkswagen logos by automotive services.
The courts declared the use of logos illegal as they do not constitute the only means of providing the consumers with information on rendered services. The courts judged that it is sufficient to inform consumers only a word notice of the trade mark.
The requirement to use the trade mark in accordance with “honest practices in industrial or commercial matters” shall mean an obligation of the person, using the trade mark, to respect the legal interests of the trade mark owner.
The European Court of Justice in its judgment, delivered in the case № C-228/03 , on the use of the logo
for manufacturing of razor blades gives examples of non-honest practices:
– the trademark is used in such a manner as to give an impression that there is a commercial connection between the third party and the trade mark owner;
– the use affects the value of the trade mark by taking unfair advantage of its distinctive character or repute;
– the use of the trademark entails the discrediting or denigration of that mark;
– where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner.
In the year of 2009, the relevant court case took place in the Russian Federation, when the customs authorities had stopped spare parts with a simple black-and-white superscription on the boxes «LADA NIVA/CLASSIK 2101-2107, 2121 (LADA VAZ 2110-2112/8, 16 valve), (CHEVY NIVA) Clutch assembly MANUFACTURER MA – RA MAKINA PARKALARI, ENDUSTRISI A.S. Made in Turkey». At the same time, the spare parts were labeled with their own colored and original trademark «KRAFTTECH KUPPLUNGEN».
The use of a standard font instead of logos of the famous brands gave the possibility for the manufacturer of spare parts to prove that indications «LADA NIVA» and «CHEVY NIVA» are for information only with regard to engineering application of the goods (Determination of the court dated 09.11.2009 №А40-57946/2008. With regard to case А40-57946/2008).
The criteria of “necessity” and “honesty” of indication of information on the product are fixed in the Law of Ukraine “On Consumer Rights Protection”. Part 1 of the Article 15 of this Law has established an obligation to indicate the following information on the product: information about the name of the goods, name or reproduction of the mark for goods and services under which the goods are sold, data of the basic properties of the product and conditions of its use.
It is impossible without indication of non-owned brand to provide the consumers with information on which exactly product the specific spare parts of another manufacturer fit in.
At the same time, the placement of the logo of the non-owned trade mark in corporate color, in size bigger than the logo of spare parts manufacturer, may be considered as unfair competition and attempt to mislead the consumers.
If it is necessary for the manufacturers of accessories and spare parts to indicate the figure of brands of which they are not the owners as well as information about non-owned product model on the package, in order to avoid intellectual property rights infringements and pursuant to the Law on consumer rights protection we deem it possible to indicate a word figure of such a brand, in black-and-white color, much smaller in size that your own trade mark. It is also possible to make a postscript “Compatible with such a model of such a manufacturer”.
Author: Anastasiia Radomska
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