C-100/02

GEROLSTEINER BRUNNEN

OPINION OF ADVOCATE GENERAL STIX-HACKL delivered on 10 July 2003 1

I — Introduction product from those of other undertakings, and is thus used as a trade mark. 4

3. The national court would like to know 1. Under Article 5(1) of Directive in this connection whether the use of an 89/104/EEC 2(hereinafter 'the Trade Mark indication of geographical origin as a trade Directive') a trade mark confers on its mark falls within the scope of proprietor exclusive rights which, among Article 6(1)(b) of the Trade Mark Direc- other things, entitle him to prevent third tive, and if so, how that provision requires parties from using a sign where there is a such use to be made. likelihood of confusion. However, those exclusive rights do not extend so far as to preclude a description of, among other things, the geographical origin of the prod- uct in question. 3

I I — Facts and order for reference

4. The plaintiff in the main proceedings, 2. It is uncertain whether and under what Gerolsteiner Brunnen GmbH & Co. (here- conditions an indication of geographical inafter 'the plaintiff') manufactures mineral origin may be used if, in addition to water and mineral spring soft drinks and describing the characteristics of the prod- markets them in the Federal Republic of uct, it is intended to differentiate the Germany.

10. The national court has made a refer- ence for a preliminary ruling because it considers that there is a likelihood of confusion as defined in the legislation on trade marks, since there is an aural simi- larity between the signs, and the products are, at the same time, very similar.

7. The plaintiff brought an action against the defendant before the German courts for infringement of its trade mark rights. It claimed that the defendant should be ordered to cease using the sign 'KERRY Spring', to provide information and to pay 11. The resolution of the dispute therefore damages. It essentially submitted that it depends, it argues, on the application of markets soft drinks with various flavours Article 6(1)(b) of the Trade Mark Direc- under the mark 'GERRI', and that in view tive. The application of that provision of the share of the market held by spring- should not generally be rejected simply water-based soft drinks labelled in this because the indication of geographical way, it must be assumed that the 'GERRI' origin is also being used by the defendant mark has a more distinctive character. as a trade mark. I-694

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12. This is clear from the very wording of 15. Finally, the Bundesgerichtshof con- Article 6(1)(b) of the Trade Mark Direc- siders that the use of the sign as a trade tive, which concerns any form of use in the mark should be taken into account when it course of trade. The Bundesgerichtshof is considered, pursuant to the final clause argues that, from a schematic viewpoint, of Article 6(1) of the Trade Mark Directive, Article 6(1)(b) of the Trade Mark Directive whether such use accords with honest is to be regarded as a protective barrier practices in industrial or commercial against the rights of prohibition set out in matters. Article 5 of the Directive.

1. Is Article 6(1)(b) of the First Trade Mark Directive also applicable if a 14. It is particularly important here that, in third party uses the indications referred the context of the balance that needs to be to therein as a trade mark (marken- struck between the rights of prohibition mässig)? defined in Article 5 of the Trade Mark Directive and the function of Article 6(1)(b) of the Trade Mark Directive of counter- acting any monopolisation of indications which must be kept free, the Court of Justice has given a broad interpretation of the concept of use as a trade mark pursuant to Article 5(1)(a) of the Trade Mark 2. If so, must that use as a trade mark be Directive. 6 taken into account when considering, pursuant to the final clause of Article 6(1) of the First Trade Mark 5 —Judgment in Joined Cases C-108/97 and C-109/97 Wind- Directive, whether use has been in surfing Chiemsee [1999] ECR I-2779, paragraph 28. accordance with 'honest practices in 6 — The Bundesgerichtshof is referring here to the Court's Judgment in BMW, cited in footnote 4, paragraph 42. industrial or commercial matters'?

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I I I— Legal framework (3) The following, inter alia, may be pro- hibited under [paragraph 1]:

A — Community law (a) affixing the sign to the goods or to the packaging thereof;

17. Article 5 of the Trade Mark Directive reads as follows: (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

20. Paragraph 23 of the Markengesetz provides as follows:

(b) indications concerning the kind, quality, quantity, intended purpose, 'Use of names and descriptive indications; value, geographical origin, the time of trade in spare parts production of goods or of rendering of the service, or other characteristics of goods or services;

The proprietor of a trade mark or a commercial business name shall not be entitled to prohibit a third party from using, in the course of trade,

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

2. a sign identical or similar to the trade mark or commercial name as an indication concerning characteristics or particularities of goods or services such as, in particular, their kind, quality, intended purpose, value, B — National law geographical origin or time of production or rendering,

19. Article 6 of the Trade Mark Directive was transposed into German law by Para- graph 23 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on the protection of trade marks and other distinctive signs) of 25 October 1994 7 (hereinafter 'the Markengesetz').

21. Both the defendant and the Commis- sion, in concurrence with the order for reference, essentially took the view in their written observations that the use of the 24. Nothing to the contrary can be inferred disputed sign 'KERRY Spring' as a trade from the wording of Article 6(1)(b) of the mark does not constitute a ground for Trade Mark Directive. generally precluding the application of Article 6(1 )(b) of the Trade Mark Direc- tive, and thus their primary legal consider- ation is that there is a greater need for indications on the origin of spring or mineral waters to be freely used. 25. Finally, since the use of a sign as a trade mark is a condition for the existence of an infringement pursuant to Article 5 of the Trade Mark Directive, the schematic clas- sification of Article 6(1)(b) of the Trade Mark Directive also argues in favour of its 22. The defendant takes the view that the application, because otherwise that provi- purpose of Article 6(1)(b) of the Trade sion would have no scope whatsoever. Mark Directive does not necessarily stand in the way of the use of the indications referred to therein as a trade mark. As grounds for this argument it refers to the case-law of the Court, 8which has held that that provision is meant to make it possible for descriptive indications to be freely used 26. The Commission essentially shares the defendant's views and also refers to the preparatory work on the Trade Mark 8 — Judgment in BMW, cited in footnote 4, paragraph 62. Directive. In its opinion it would be I-698

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31. The United Kingdom and the Greek Government essentially share the plaintiff's 28. In the plaintiffs view, the very fact that views. Article 6(1 )(b) of the Directive refers only to the type of indication, but not to its purpose, argues in favour of an interpre- tation which covers purely descriptive use alone. This view is further substantiated by the schematic classification of Article 6 in relation to Articles 7 and 9 of the Trade Mark Directive and the derogations they contain. 32. The United Kingdom also points out that, if Article 6(1 )(b) of the Trade Mark Directive applies to the use of the disputed sign as a trade mark, then the rules on the registration of trade marks become incon- sistent with the rules on trade mark infringements, since the proprietor of a trade mark would have the right to prevent 29. The plaintiff states that, from a sche- the registration of the sign, but not its use. matic viewpoint, the provision contained in Article 6(1 )(b) of the Trade Mark Directive cannot be regarded as a barrier to the rights 9 — Cited in footnote 5, paragraph 28.

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(2) Legal assessment between the possible types of use that might be made of a sign. Its wording refers to 'indications' on geographical origin, without mentioning the possibility that they may be purely descriptive in nature.

35. It should first be pointed out that the 38. If the Community legislature had wording of Article 6(1)(b) of the Trade wanted to distinguish between the various Mark Directive does not distinguish types of use of a sign, it would have been I-700

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only logical to include a corresponding lature thus deliberately refrained from element in Article 6(1 )(b) of the Trade drawing a distinction according to type of Mark Directive. But this was not done, so use. the very wording of the provision in ques- tion allows little scope for a differentiation of that type to be made.

41. Lastly, it should be pointed out that the reference by the plaintiff and the Greek 39. All that can be inferred from the Government to Greek, Italian and Spanish wording of Article 6(1 )(b) of the Trade trade mark law makes it clear that in those Mark Directive is that a sign falls within its Member States a sign may not be used as a scope only where it contains an indication trade mark, but only in a descriptive about one of the characteristics referred to, manner, in order to comply with the such as geographical origin. relevant element of Article 6(1 )(b) of the Trade Mark Directive. However, the way in which the Trade Mark Directive has been transposed into national law in the Member States does not provide any cogent conclusions about how it should be inter- preted in Community law.

(i) The relationship between Articles 5 and identical to the trade mark for goods 6 of the Trade Mark Directive identical to those for which the mark is registered if that use cannot affect his own interests as proprietor of the mark, having regard to its functions'; 15 the Court also referred to its consistent case-law here, 16 defining the essential function of a trade 43. While Article 5 sets out the exclusive mark as being '...to guarantee the identity rights of the trade mark proprietor, of origin of the marked goods or services to Article 6 contains limits to those rights. 12 the consumer or end user by enabling him, But if Article 6(1)(b) of the Trade Mark without any possibility of confusion, to Directive in particular contains a limit to distinguish the goods or services from the exclusive rights under Article 5, its others which have another origin' 1 7 regulatory content logically requires that (known as the guarantee of origin). the use in question should also be covered by Article 5. Both the Commission and the defendant rightly underline that reliance on Article 6 would be meaningless if the use in question did not in any case come under Article 5. 45. Without needing a definition here of the use of a sign as a trade mark, 18 it is clear from this case-law that the admissi- bility of using a sign for purposes other than to distinguish the goods or services of 44. The Court has recently had a number one undertaking from those of another of opportunities to give its views on the cannot be inferred from Article 6 of the extent of the protection offered by Article 5 Trade Mark Directive, because such a use of the Trade Mark Directive, which it has does not fall within the protective scope of interpreted to the effect that reliance on the Article 5. exclusive rights protected therein is con- ditional upon an action which affects the interests protected by that provision. 13 In the judgment in Arsenal14 the Court con- firmed this view and held that '[t]he propri- etor may not prohibit the use of a sign 46. Overall I therefore conclude that the application of Article 6 may not depend on 12 — At this point the question may be left open as to whether whether or not a sign is used as a trade these are exceptions to the rights set out in Article 5 of the Trade Mark Directive, or limits which are inherent in the mark. system. The plaintiffs view notwithstanding, it is also irrelevant whether Article 6 of the Trade Mark Directive creates an 'independent right of use', since such a right can logically refer only to a use which is fundamentally prohibited, which then brings us back to the barrier 15 — Op. cit., paragraph 54. problem. 16 — Cf. among others the judgments in Case 102/77 Hoff- 13 — See, for example, the judgment in Case C-2/00 Hökerhoff mann-La Roche [1978] ECR 1139, paragraph 7, and in [2002] ECR I-4187, paragraph 16. That case dealt with a Case C-299/99 Philips [2002] ECR I-5475, paragraph 30. parallel question of whether the use of a sign as a 17 — Op. cit., paragraph 48. characteristic can be subsumed under Article 5. 18 — The Court expressly refused to give such a definition in 14 — Judgment in Case C-206/01 Arsenal Football Club [2002] paragraph 17 of the judgment in Hölterhoff, cited in ECR I-10273. footnote 13.

49. Article 6 of the Trade Mark Directive primarily serves to reconcile the fundamen- tal interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights 48. Article 3(1 )(c) of the Trade Mark are able to fulfil their essential role in the Directive provides that trade marks which system of undistorted competition. 19 consist exclusively of signs or indications According to the case-law of the Court which may serve, in trade, to designate Article 6 of the Trade Mark Directive geographical origin are excluded in prin- unquestionably constitutes a barrier to the ciple from registration. However, there are rights of the trade mark proprietor, which two exceptions to this prohibition. The defines the limits of his powers. As a sort of prohibition on registration does not apply regulating device, therefore, Article 6 of the if, before the date of application for regis- Trade Mark Directive is closely linked to tration and following the use made of it, the exclusive rights set out in Article 5 of the trade mark has acquired a distinctive the Trade Mark Directive. character, or if there is an association which has registered the indication of origin as a collective mark. If these excep- tions to the prohibition on registering an indication of geographical origin do not apply, the possibility also exists of applying for a word/figurative mark. Here the mess- 50. The Court's case-law is to be under- age about the geographical origin is con- stood to mean that the essential function of veyed on the label or in the advertising, even where the indication of origin itself is not protected by the mark. Against this 19 — Judgment in Case C-63/97. cited in footnote 4, paragtaph background it appears, contrary to the 62.

20 — See above, point 44. 21 — Cf. among others the judgments in Case 102/77, cited in 22 — It is well known that the Trade Mark Directive resulted footnote 16, paragraph 7, in Case C-299/99, cited in from the tension between fundamental freedoms and the footnote 16, paragraph 30, and in Case C-206/01, cited in protection of intellectual property. footnote 14, paragraph 48. 23 — Cited in footnote 5, paragraph 28.

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Directive that where a mark consisting present case. I would therefore hesitate to wholly or partly of a geographical name classify the Court ruling cited as generally has been registered, that provision does not applicable. 24 confer on third parties the right 'to use the name as a trade mark but merely guaran- tees their right to use it descriptively, that is to say, as an indication of geographical origin' (our italics). However, what might at first sight appear to provide a solution to the present dispute proves, on closer inspection, to be irrelevant. 58. In the light of the above observations I therefore conclude that the use of a sign as a trade mark does not constitute a ground for precluding the application of Article 6(1 )(b) of the Trade Mark Directive on principle.

56. It should be stressed that in Windsur- fing Chiemsee the plaintiff was the propri- etor of a trade mark consisting wholly or B — Question 2 partly of an indication of geographical origin, whereas in the main proceedings here the plaintiff's trade marks constitute or contain imaginary names. Furthermore, in the Windsurfing Chiemsee cases the Court had to decide under what conditions Article 3(1 )(c) of the Trade Mark Directive (1) Material submissions of the parties precludes the registration of a mark con- sisting solely of a geographical name.

61. The defendant and the Commission stress that use as a trade mark is not the only criterion, however, but is just one of several to be taken into account when 64. Whether the way in which a sign is assessing the requirements set out in used accords with honest practices in Article 6 of the Trade Mark Directive. industrial or commercial matters depends on two elements: the registered marks with which there is assumed to be a risk of confusion, and the way in which the sign itself is used. From this point of view, therefore, the use as a trade mark should be taken into account when assessing the 62. In the Commission's view, the examin- 'honest practices' element. ation of the element of 'honest practices in industrial or commercial matters' should look at the circumstances of the individual case. It refers in its written observations to the special characteristics of the market in mineral waters which is relevant in the present case.

65. In this context the parties' specific circumstances and mutual interests must be given particular consideration. Contrary (2) Legal assessment to the view taken by the plaintiff, this examination of the individual circum- stances cannot be dispensed with because the use of a sign as a trade mark might be presumed to constitute an infringement. It would hardly be logical to start by subsum-

63. The fact that not every use as a trade mark can be permitted in the context of the 25 — Cited in footnote 4, paragraph 61.

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ing the use of a sign as a trade mark under describe the characteristics of the prod- Article 6 of the Trade Mark Directive, only uct. 27 then to dispense with the requisite examin- ation of the individual circumstances and systematically preclude its application once again.

67. With regard to the registered trade marks it must be said that the weight given to the interests of the trade mark proprietor 69. It thus also becomes clear that there is a largely depends on the distinctive character close link between the way in which the and the repute of the marks in question, as indication is used and the purpose for the Commission rightly emphasised. 26 which it is used, in so far as the method Thus, the trade mark proprietor appears of use also points to the purpose of use. less worthy of protection if he must assume That is the case in the main proceedings: at least some of the responsibility for the the suspicion that the indication of the likelihood of confusion, such as where the spring is being used so that the mineral registered mark consists of descriptive indi- water products in question will be cations which have become distinctive only attributed to a particular undertaking — through use. The repute of the mark is also and not merely as an indication of the important: the greater it is, the more likely geographical origin of the mineral water it is that the reputation of the goods or used — arises here because of the promi- services concerned and the value of the nence given to the indication in question mark will be undermined by the use of an and other elements of its design. The way in indication which does more than merely

27 — See, for example, the case-law of the Court on Article 7(2) 26 — See the judgment in Case C-63/97, cited in footnote 4, of the Trade Mark Directive, in particular the judgment in paragraph 40. Case C-63/97, cited in footnote 4, paragraph 51 et seq.

72. All of this suggests that when it is considered, pursuant to the final clause of Article 6(1) of the Trade Mark Directive, whether use had been in accordance with 'honest practices in industrial or commer- cial matters', the way in which an indi- cation — as listed in Article 6(1)(b) of the Trade Mark Directive — is used must be taken into account. This may cover, for 71. With reference to mineral water prod- example, the degree of similarity of the ucts it should also be pointed out that the indication with the registered mark, the simple use of the name of the spring does degree of emphasis of the indication, not, however, allow any conclusions to be including where this goes beyond what drawn about the purpose of that indication. may be required under Community law, Articles 7 and 8 of Council Directive and the public perception of the indication 80/777/EEC 28 provide that the geographi- as a trade mark. cal origin of a mineral water — either the source or the place of exploitation — must 29 — Such a designation may also constitute a protected designation of origin or a protected geographical indi- cation pursuant to Council Regulation (EEC) No 2081/92 28 — Directive of 15 July 1980 on the approximation of the laws of 14 July 1992 on the protection of geographical of the Member States relating to the exploitation and indications and designations of origin for agricultural marketing of natural mineral waters (OJ 1980 L 229, p. 1). products and foodstuffs (OJ 1992 L 208, p. 1).

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V — Conclusion

73. On the basis of the above observations I propose that the Court should answer the questions referred by the Bundesgerichtshof as follows: