UK: Questions of Dates

A European Court of Justice (ECJ) decision on 27 April 2006 deals with the issue of the date on mark must be considered in trade mark infringement actions. which the distinctiveness of a trade

Established use

In 1980, Levi Strauss & Co obtained a Benelux trade mark registration covering clothing of the graphic mark known as ‘mouette (seagull)’, a design represented by a double row of overstitching curving downwards in the middle, placed in the centre of a pentagonal pocket. Casucci Spa put jeans onto the market in the Benelux countries bearing a sign comprising a double row of overstitching, curving upwards in the centre back pockets. Levi Strauss, alleging trade mark infringement, brought an action against Casucci on 11 March 1998 before the Brussels Commercial Court.

When the first court dismissed Levi Strauss's application on 28 October 1999, Levi Strauss brought an appeal at the Brussels Court of Appeal. The Court of Appeal ruled in favour of Casucci finding that the marks under consideration were not confusingly similar and importantly for the subsequent referral to the ECJ, that Levi Strauss's mark composed of components whose characteristics were now common to the trade for the products concerned, whose effect was to significantly weaken the distinctiveness of the mark as a whole.

Levi Strauss brought an appeal before the Court of Cassation contending that Casucci appeared to accept the ‘mouette’ mark was still highly distinctive in 1997 and 1998, the year in which the purchases of the jeans were made, the distribution of which lead to the dilution of the trade mark and its loss of distinctive character.

In this context, Levi Strauss argued that the Court of Appeal should have considered the question of the distinctiveness of the ‘mouette’ mark at the time that the ‘infringing’ use began and not at the time of the hearing of the case. Levi Strauss further argued that whilst the Court of Appeal considered the widespread use of the components of the mark in question weakened substantially the distinctive character of the mark, after the time that Casucci had begun use of the mark, the Court of Appeal had not found that such loss of distinctive character was due in part or in full to the actions of Levi Strauss.

The Court of Cassation referred a number of questions to the ECJ for guidance, which essentially concerned two important points. One, at which date does the distinctiveness of a trade mark have to be considered in infringement actions; the date when the hearing of the case takes place or the date on which the infringing use begins? And secondly if a trade mark is found to have become a term which is common to the trade after the date when the infringer began its use, can the proprietor still prevent the use of the mark in question?

Levi Strauss essentially argued that the trade mark under consideration in the case at hand was distinctive at the time that Casucci began using its mark and thus it should not be penalised if at the date of the Hearing of the case that situation had changed.

In essence, the ECJ agreed with this argument. It should be remembered that based on established ECJ case law, the distinctiveness of a trade mark has a large bearing on whether trade marks are deemed confusingly similar. The higher the distinctive character of the mark in question, the greater the likelihood of confusion with other marks.

The ECJ held that if the likelihood of confusion was assessed at a time after the sign in question began to be used, the user of that sign might take undue advantage of his own unlawful behaviour by alleging that the product had become less renowned, a matter for which he was responsible or to which he himself contributed.

The ECJ pointed to the fact that Article 12(2)(a) of the European Trade Mark Directive provides:-

And thus the potential infringer can rely on the provisions of Article 12(2)(a) if the mark in question had become nondistinctive as a result of the acts or inactivity of the proprietor of the mark. The infringer’s actions post the first date of use should not therefore be considered with regards of the question of distinctiveness of the proprietor's trade mark.

However, not everything went Levi Strauss's way. The ECJ found that if the potential infringer could benefit from Article 12(2)(a) then the court should not provide the proprietor with the remedy of preventing the continued use of the mark in question, even if the infringer’s actions are held to be an infringement at the date of its first use of the mark.

Essentially, the ECJ held that the registration in question would no longer be valid, and thus although presumably the proprietor could claim monetary damages for the alleged infringement up to the date the registration is no longer deemed valid, the continued use of the mark in question could no longer be prevented.

The ECJ's findings in the case seem entirely logical and a reasonable way to proceed. It was correct to say that the distinctiveness of the mark under consideration for the purposes of assessing confusion must be taken at the date the purported infringement occurred and not at the date of the hearing, otherwise a potential infringers ‘unlawful’ activities could damage the distinctiveness of the proprietor’s trade mark and weaken the proprietor’s position.

However, the ECJ also correctly held that if it can be proved that as a result of the acts or inactivity of the proprietor that the proprietor’s trade mark had become a term common to the trade, then the proprietor can no longer prevent its use, even though presumably it would still be able to obtain some form of damages for the use made by the infringer when the mark was still distinctive.