C-112/99

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TOSHIBA EUROPE

I — Facts and procedure in the main descriptions to identify its materials, for action example T-50 P' for toner, as well as order numbers.

6. Toshiba Europe GmbH (hereinafter 'Toshiba'), the plaintiff in the main action, is the German subsidiary of Toshiba Cor- poration. The products sold by the plaintiff 9. Katun uses Toshiba's model references in Europe include photocopiers, as well as and order numbers in its catalogues. These other items, such as replacement parts and numbers are set out alongside the Katun consumables. order numbers and are used to identify Katun products which may be used in Toshiba photocopiers. The Toshiba order numbers are to be found in a column headed 'OEM Art.-Nr' ('Original Equip- 7. Katun Germany GmbH (hereinafter ment Manufacturer') (hereinafter 'product 'Katun'), the defendant in the main action, numbers') and the Katun numbers in a markets replacement parts and consumable column headed 'Katun Art.-Nr'. items for Toshiba photocopiers.

8. Toshiba uses particular model references Each product is identified in the catalogue to identify its photocopiers, such as 'Tosh- in the following way (extract from the iba 5010'. It uses certain abbreviated catalogue):

KATUN Katun -Produkte für Toshiba-Kopierer 2510/2550 OEM Art.-Nr Katun Art.-Nr Beschreibung Modelle T2510 43013746 Toner, schwarz; 450 g Kartusche (Preis pro 2510.2550 Kartusche, Verkauf im 4er-Paket)

15. Article 3a(1) of the Directive states that 'Comparative advertising shall, as far as the comparison is concerned, be permitted 12. Directive 97/55 amended Directive when the following conditions are met: 84/450/EEC, 3including its title, which is now 'Council Directive ... concerning mis- leading and comparative advertising'.

3—Council Directive of 10 September 1984 relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising (OJ 1984 L 250, p. 17, hereinafter 'the Direc- (a) it is not misleading according to Arti- tive'). cles 2(2), 3 and 7(1);

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TOSHIBA EUROPE

(b) it compares goods or services meeting competitor or of the designation of the same needs or intended for the origin of competing products; same purpose;

(c) it objectively compares one or more (h) it does not present goods or services as material, relevant, verifiable and repre- imitations or replicas of goods or sentative features of those goods and services bearing a protected trade mark services, which may include price; or trade name.'

18. At the date of the reference for a the following questions to the Court for a preliminary ruling, Directive 97/55 had preliminary ruling: not been transposed into national law.

'1. Is advertising by a supplier of spare parts and consumable items for an I I I— The questions referred equipment manufacturer's product to be regarded as comparative advertising within the meaning of Article 2(2a) of the directive if the advertising indicates 19. The Landgericht Düsseldorf (Regional the manufacturer's product numbers Court, Düsseldorf), Germany, states that (OEM numbers) for the relevant origi- following the entry into force of Directive nal spare parts and consumable items 97/55, the Bundesgerichtshof held that for reference purposes in order to comparative advertising was thenceforth identify the supplier's products? to be regarded as permitted, provided that the requirements set out in Article 3a(1)(a) to (h) of the Directive were fulfilled.

(b) Is the fact that the equipment 22. By its first question the national court manufacturer's product numbers asks whether the definition of 'comparative (OEM numbers) appear alongside advertising' in Article 2(2a) of the Directive the supplier's own order numbers covers advertising by an economic operator sufficient to justify an allegation to promote products intended for use with that unfair advantage is being equipment manufactured by another eco- taken of the reputation of the nomic operator, when the advertising indi- distinguishing mark of a competi- cates the product numbers used by the tor within the meaning of Arti- other operator to identify its products cle 3a(1)(g), if the third party com- alongside the product numbers used by petitor could instead indicate in the advertiser for the purposes of identify- each case the product for which the ing his products. consumable item or spare part is suitable?

(c) When assessing unfairness, does it 23. According to Article 2(1) of the Direc- matter whether a reference (solely) tive, 'advertising' means, for the purposes to the product for which the con- of the Directive, 'the making of a repre- sumable item or spare part is sentation in any form in connection with a suitable, rather than to the product trade, business, craft or profession in order number (OEM number), is likely to to promote the supply of goods or services, make sale of the supplier's pro- including immovable property, rights and ducts difficult, particularly because obligations'.

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OPINION OF MR LÉGER — CASE C-112/99

26. The next question is the comparative nature of the advertising. Apart from Toshiba, none of the interveners disputes 30. This provision displays two features. this classification. The national court itself states that Directive 97/55 is applicable to the main proceedings, even though it has made that issue the subject of a preliminary reference. 9 This presupposes that it con- sidered the advertising which is the subject- matter of the dispute to be 'comparative'. The first is the absence of a clear require- ment that there be an express comparison. The definition does not state that, in order to fall within the concept of 'comparative advertising', an advertisement must describe the relative merits of goods or services. This requirement is laid down 27. In order to answer the national court, later on in the Directive, at the point where regard should be had to the elements of the it deals with the conditions in which Directive which reflect the aim of the comparative advertising is lawful. This omission may be understood as a sign that the Community legislature was seeking to 7 — See the text of the first question referred for a preliminary ruling. cover the widest possible number of busi- 8 — The concept of 'consumer' should here be understood as ness communication practices affecting including also trade customers, who are plainly the principal client base for photocopiers as well as for their accompany- several competing economic operators. It ing parts. may be concluded that a comparison, in the 9 — See page 10 of the English translation of the reference for a preliminary ruling. broadest sense, begins where two compet-

32. In the present case, among the infor- mation set out in Katun's catalogues is a 36. As far as the interpretation of Arti- reference to the trade mark 'Toshiba' in cle 2(2a) of the Directive is concerned, I am order to identify the relevant photocopier. of the view that advertising should be The product numbers are also referred to, and there is no doubt that they are specific to the plaintiff in the main action, given 10 — Toshiba states that ' i norder to indicate the purpose for winch the products are made, it suffices to refer to the type that they identify the replacement parts and of photocopier in question' (Part IV of its written consumable items manufactured by it for observations). 11 — Page 10 of the English translation of the request for a its photocopiers. preliminary reference.

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considered to be 'comparative advertising' V — Objective comparison of goods within the meaning of that provision where (Question 2(a)) it allows a competitor or the goods pro- duced by a competitor to be identified, even if that identification arises only by implica- tion. 40. Comparative advertising is permitted when the conditions set out in Article 3a(1) of the Directive are met. According to Recital 11 in Directive 97/55 'the condi- 37. There is an implicit identification of a tions of comparative advertising should be competitor or of his products where it can cumulative and respected in their entirety.' be shown that the numbers used by the competitor to designate his own products are sufficient for an ordinarily well- informed person to identify those products or their manufacturer.

48. If comparison consists in the act of 'contemplating together two or more things 45. The facts in the main action have an with a view to determining similarities or ambiguous aspect which may explain this differences', 13 one could consider the jux- difficulty. In Katun's advertising one sees taposition of two numbers, each of which the double justification for comparative in itself has a meaning, as being a form of advertising — improving the information implicit comparison whose purpose is to available to consumers and stimulating highlight the similarities between them. In competition. other words, even where there is no express statement making clear their similarities or differences, the representation of two pro- ducts leads logically to the conclusion that they are interchangeable. The general and vague manner in which the two products 46. As Katun submits, the display of the are passively placed alongside one another order numbers alongside each other sig- leads one to conclude, in this case, that the nifies that the various products made by it advertiser seeks to present them as wholly are technically identical to the correspond- equivalent. ing products made by the manufacturer of the original equipment, and may accord- ingly be used in the same way in the latter's equipment. 12 By doing this, Katun may appear content to inform its customers of the purpose and functions of its own products, without at the same time actively comparing the two competing products. 49. It remains to be established whether an implicit comparison may be considered to be an objective comparison within the meaning of Article 3a(1)(c) of the Direc- tive. One might also ask whether this is the case when the implicit comparison is made in a general manner, in such a way that it 47. Nevertheless, the advertising in ques- appears to present the products as being tion is not devoid of any comparative wholly identical.

50. It should be remembered that for a 53. The same conclusion is necessary with comparison to be objective the representa- regard to the price comparison. Arti- tions made as to the qualities or deficiencies cle 3a(1)(c) of the Directive states that of the product must be verifiable. 14 price is one of the possible features which may be compared. Price is given by way of example, as is clear from the wording of the article, which provides that the material, relevant, verifiable and representative fea- tures of the goods 'may include price'. 51. An implicit comparison is not necessa- rily subjective if the information which it contains, provided it is objective, is not ambiguous. To say, for example, that an item is more attractive than or superior to another product is a subjective appraisal. But simultaneously to present two pro- ducts, without providing any description of According to Katun, its catalogues include them, in such a way that it may be taken a comparison of prices within the meaning that they are intended for the same purpose of Article 3a(1)(c) of the Directive in that it should be considered, in that regard, as an is suggested in the catalogues that a lower objective comparison, because it is verifi- price is charged for products of the same able, notwithstanding the implicit nature of quality. 15 Even if, in the documents before the information. the Court, there is no indication of price in the catalogues, such a claim should be regarded as free of subjectivity. A compe- titor who has been harmed can show perfectly well that the prices actually charged rebut the statements in the adver- tisement. Consumers can also verify the 52. In this context, the display of product truth of this information by recourse to numbers alongside one another constitutes other sources, such as price lists issued by an objective comparison, as regards the the two competing suppliers. purpose or use of the replacement parts and consumable items. It is clear that to treat in the same way products supplied from the two sources is first and foremost an expres- sion of functional identity, the message implicitly but unambiguously conveyed being that the Katun product is, like its Toshiba equivalent, intended to service a Toshiba photocopier. 54. Thus, the equality suggested by the advertising in this case comprises a number

of objective items of information, such as product in question, but also that Katun the price and the purpose to which the states that its products are cheaper while goods may be put, which it is straightfor- still providing the same level of quality and ward to identify and to verify. From this performance. 16 point of view, it could be considered as leading to an objective comparison of material, relevant, verifiable and represen- tative features of the goods in question within the meaning of Article 3a(1)(c) of the Directive. 58. The juxtaposition of the product refer- ences without any descriptive commentary shows the advertiser's intention to suggest an identity of quality between its products and those of its competitor. The quality of a 55. However, a method of comparison product is the result of a number of positive which consists in presenting two products features which can often be difficult to or two sets of references alongside one identify precisely and completely, even another without at the same time providing where the product in question is a simple even a minimal commentary on their one. similar or different features is capable, in my opinion, by not identifying exactly these points of comparison, of giving rise to confusion which is harmful to the competing economic operator. 59. The objectivity of the information is masked by the impossibility of listing the features on which the comparison is based, and consequently of verifying the merits claimed for them. Seen from this perspec- 56. If the implicit nature of the comparison tive and having regard to the documents is not in itself enough to render the before the Court, advertising of this kind advertising unfair, the same is not so of its does not appear to me to comply with the general character. The passive juxtaposition requirement for an objective presentation of the products is an invitation to treat as of the goods. equivalent characteristics which are not all capable of being identified. If one ignores the price or the purpose of the supplies in question, the advertising appears to convey a desire by the advertiser to confer on his product all the virtues of the competing 60. It will be for the national court to product, including those which belong to satisfy itself on this point, by establishing the competitor's trade mark itself. whether this presentation is accompanied by a precise and concrete description of the merits or deficiencies of the advertised products, such as their durability, reliability or ease of use. 57. It should be remembered that not only is each order number set out alongside the other on the line corresponding to the 16— Ibud.

VI — The misuse of the reputation of another 17 — Recitals 12 and 13. In terms of the latter recital: 'Article 5 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks confers exclusive rights on the proprietor of a registered trade mark, including the right to prevent all third parties from using, in the course of a trade, any sign which is identical with, or similar to, the 63. To use comparative advertising is also trade mark in relation to identical goods or services or of necessity to make use of a competitor's even, where appropriate, other goods'.

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TOSHIBA EUROPE

65. However, in order to be effective and tolerating practices which seek to take fair, comparative advertising must permit unfair advantage of the reputation of the target group to identify the products competitors in a way which is contrary to presented and to distinguish those made by Article 3a(1)(g) of the Directive. one undertaking from those of its compe- titor. 18 One cannot therefore exclude every reference by an operator to distinguishing marks used by its competitors. 19

69. If that point of view were accepted, an economic operator would have the right to use any identifying item used by a compe- 66. The principal quality of a 'distinguish- titor, as this item would have been stripped ing mark' is to facilitate recognition. It of legal protection, and to do so in order to follows that something cannot be consid- take unfair advantage of the latter's reputa- ered to be a 'distinguishing mark' within tion. the meaning of the Directive if it does not enable an economic operator to be identi- fied in some way.

name or other distinguishing marks, 21 manufacturer of products designed to be which tends to show that the concept of used with equipment manufactured by 'distinguishing marks' includes trade marks another economic operator, whose adver- and trade names, but that these terms are tising gives details of the references used by not exhaustive. the latter for his own products alongside the references for the advertiser's products with a view to identifying those products, may be regarded as taking unfair advantage of the reputation attached to distinguishing 72. Having disposed of the first question marks of a competitor within the meaning referred for a preliminary ruling, the of Article 3a(l)(g) of the Directive. national court must establish whether the order numbers allow the Toshiba products to be identified so that it may classify the advertising in question for the purposes of Article 2(2a) of the Directive. 22 The con- clusions reached will be useful for that court in considering whether to classify these numbers as 'distinguishing marks' 75. This question seeks to determine the within the meaning of Article 3a(l)(g) of criteria to be applied by the national court the Directive. in assessing whether the advertiser takes unfair advantage of the reputation of his competitor (third question, paragraphs (a) and (b)). The national court also wishes to know whether, in determining these cri- 73. It follows that there are grounds for teria, it is necessary to take into account the considering that the references given by an fact that the prohibition on the use of economic operator to products which he product numbers alongside one another manufactures, with a view to facilitating and authorisation merely of a reference to their identification, constitute 'distinguish- the equipment for which the products are ing marks' within the meaning of this suitable may constitute a barrier to the provision, when the references enable an distribution of the advertiser's products ordinarily well-informed person to identify (third question, paragraph (c)). the economic operator in question.

expression of the idea that a share of the 80. That is the case where a step is taken by benefit of this reputation is inevitably the advertiser only with a view to taking diverted to the advertiser. advantage of the reputation of his compe- titor for the benefit of his own activities. On the other hand, there could not truly be considered to be an unfair advantage where the content of the comparative advertising can be justified by reference to certain 77. Indeed, the fact that an economic conditions. operator can challenge the supremacy or simply the market position of a competitor merely by identifying the competitor may encourage the operator, when the other has the benefit of a certain reputation, to follow in his wake so as to share the fruits of his reputation. In such a case, the mere 81. According to Recital 14, the effective- juxtaposition of the name of the advertiser ness of comparative advertising may and of his competitor, whether it be to depend on the identification of a competi- promote the notion that the products are tor's products by reference to its trade mark equivalent or to affirm the superiority of or trade name. Recital 15 states that the one over the other, leads the advertiser to intended target of allowing an advertiser to take advantage of the reputation of the use the distinguishing marks of a compe- competitor. titor is 'solely to distinguish between them and thus to highlight the differences objec- tively'.

87. It is therefore this test of necessity that 84. Instead, it is necessary to delimit the in my view forms the basis of an under- ways in which it is permissible to use the standing of the lawfulness of comparative distinguishing marks of the competitor. advertising under Article 3a(l)(g) of the Since exceptions must be interpreted nar- Directive. rowly, 24 derogations from the protected rights of proprietors should only be allowed within limits which are strictly necessary to achieve the object of the directive, which is to make possible a 88. In this context, as is mentioned above, comparison of the objective characteristics the indication of order numbers alongside of the products. one another is an ambiguous method of advertising.

89. The advertising in question in the 85. It follows that unfair advantage is present case can be understood in two taken of a competitor's reputation when ways. the reference to the competitor or the manner in which he is referred to is not necessary in order to inform customers of the respective qualities of the goods com- pared. Conversely, this complaint cannot Katun claims that the indication of the be upheld where the matters to which the numbers alongside one another aims only comparison relates cannot be described to inform consumers of the uses to which without the advertiser making reference to its products may be put, which is identical his competitor, even though the advertiser to that of the Toshiba products, because may at the same time take some advantage they are for use in Toshiba photocopiers. of it. Even if, at the end of the day, one may

92. However, Katun's intentions are not On the other hand, by its vague and general limited to the provision of functional nature, the advertising seems rather to information to consumers. As the order indicate that the products are in fact for a preliminary ruling makes clear, Katun interchangeable but without indicating in also contends that the display of product what respect this is so. Seen from this numbers alongside one another allows perspective, it is more evidently competi- customers to compare prices. 26 By display- tive, particularly when, in addition to the ing these numbers alongside one another, parallel references, it mentions a more that is to say in a non-descriptive manner, it favourable selling price for Katun's pro- treats the products as equivalent by refer- ducts of the same quality. As regards this ence to features other than their purpose. In last point, there is a risk of presenting the particular, there is a suggestion that they products as being equal which is not are of the same quality. permissible if not justified by the informa- tive purpose of the advertising.

93. I will not address this last point, 90. A technical explanation of the purpose because, as has been seen, this type of of goods or services does not necessarily comparison seems contrary in principle to take the form of comparative advertising. the requirement that there be an objective The provision of straightforward informa- comparison of the features of the products. tion intended to describe the method of use It could not therefore be justifiable in any of the product advertised to consumers way. could in principle be achieved by descrip- tive methods other than by way of a comparison.

The purpose of the products 98. In order to find the existence of con- duct which takes unfair advantage of the reputation of a competitor, one must have regard to the fact that the references of the competing undertaking are displayed 95. It must be established to what extent alongside those of the other undertaking, the use of product numbers and their thereby suggesting that the two products display alongside one another, without are equal. any description of the features of the products, may be judged necessary to inform customers of the purpose of the products. 99. It is not the function of the Court of Justice to rule on whether it is necessary for the advertiser to mention alongside the reference numbers of his own products 96. The fact that the advertiser uses pro- those of his competitor. The Court must, duct numbers does not, in my opinion, give however, provide the national court with rise in itself to specific problems distinct the guidelines to enable it to carry out this from those that arise in the case of a analysis. straightforward reference to the trade mark by the supplier of spare parts and consum- able items. The matter will be one for the national court, but it is not impossible that these numbers are perceived by users of Toshiba photocopiers as distinguishing 100. What is important, in my view, to marks of that trade mark. If so, the display achieve the objectives of the Directive is of these product numbers would be equiva- that the information which the advertiser lent to mentioning the trade mark itself. seeks to communicate to consumers as to the use to which the products may be put can be communicated effectively.

102. In the present case, the national court permitted unless it has first been established should establish if there are any ways in that there is no other practicable way of which the use of Katun's products can be allowing him to market the products revealed other than by referring to Toshi- thereby identified in a competitive manner. ba's product numbers. It should take The advantage of using product numbers in account of the fact that the trade mark of order to sell the products are not thereby the equipment for which the products are necessarily lawful, as they originate with designed can quite legitimately be referred the competitor himself. 27 to. It should ask whether it is not possible to depict the equipment in detail, indicating the locations of the different accessories. The national court could consider any other alternatives which would allow Katun to dispense with the use of Toshiba's numbering system, such as a written 106. It follows that account may be taken description of the purpose of the products. of the consequences of not being able to refer to the product number of the compet- ing product only if no other solution is available whereby the advertiser may use comparative advertising. 103. I do not consider that the fact that another system of comparison makes dis- tribution of the products by the supplier more difficult is material when establishing the problems that might be caused by a prohibition on the use of order numbers. Price comparison

109. I have already accepted that, even in this implicit form and provided that it is 113. It is however equally necessary to limited to this point, comparative advertis- specify the relative prices explicitly. The ing is not contrary to the requirement for use of an article number belonging to an objective price comparison within the Toshiba or of an equivalent distinguishing meaning of Article 3a(1)(c) of the Direc- mark cannot be allowed without the price tive. To say that article X is cheaper than being mentioned if the advertiser's inten- article Y without giving any specific figures tion is comparative advertising of those is not, as such, a subjective appraisal. prices.

114. This is because the display of a 110. It is however necessary to ask whether distinguishing mark, such as the product displaying numbers alongside one another number, alongside that of another, without is necessary for a price comparison made in an indication of price, would no longer this way, having regard to the requirement merely identify the competitor, as in the that the reputation belonging to a distin- case of an explicit price comparison. As I guishing mark be protected. have already pointed out in the context of the requirement for an objective compar- ison, it would also draw the customer's attention to the equivalent quality of the products.

111. The use of the product numbers of a competitor does not take unfair advantage of his reputation where they constitute 'distinguishing marks' within the meaning In such a case one might reasonably be of Article 3a(1)(g) of the Directive, and the concerned that the advertiser might take prices are mentioned explicitly. unfair advantage of the reputation of his

(1) Advertising by an economic operator to promote products intended to be used with equipment manufactured by another economic operator which indicates the product references used by the latter to identify his own products alongside the references used by the advertiser for his products, the aim being

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to identify the advertiser's products, constitutes 'comparative advertising' within the meaning of Article 2(2a) of Council Directive 84/450/EEC of 10 September 1984 relating to the approximation of laws, regulations and administrative provisions of the Member States concerning misleading advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997 concerning misleading advertising so as to include comparative advertising, where this indication allows an ordinarily well-informed person to identify the economic operator whose product references are used in the advertising.

(2) Comparative advertising which mentions the references used by another economic operator for his own products alongside the references used by the advertiser for his products, the aim being to identify the advertiser's products, without any further information being provided as to the respective features of the products advertised, does not constitute an 'objective comparison' within the meaning of Article 3a(1)(c) of Directive 84/450.

Nor is there an objective comparison where the comparative advertising represents the products in question as being of the same quality without at the same time describing the verifiable features of these products justifying this view, even if the comparative advertising states that the advertiser's products are being sold at a lower price.