On 11 April 2019, the Court of Justice of the European Union (the "ECJ") issued its judgment in the ÖKO-Test Verlag case (C-690/17) on the interpretation of Regulation 207/2009 on the European Union trade mark (the "Trade Mark Regulation") and Directive 2008/95 on the approximation of the laws of the Member States relating to trade marks (the "Trade Mark Directive") in relation to quality labels. In its judgment, the ECJ answered two questions, namely (i) whether putting a sign identical with, or similar to, a trade mark consisting of a quality label on products which are different from those for which the trade mark is registered constitutes a trade mark infringement and (ii) whether the proprietor of a reputed trade mark consisting of a quality label can prevent such use.
ÖKO-Test Verlag publishes and sells a magazine in Germany that provides general consumer information and contains the results of performance and compliance tests carried out by the firm on various products. ÖKO-Test Verlag is proprietor of an EU trade mark, registered for printed matter and for services that consist in conducting tests and providing consumer information and consultancy (the "ÖKO-TEST mark"). Sometimes, ÖKO-Test Verlag grants the right to third parties whose products have been tested to affix its label on those products under a trade mark licence agreement.
The defendant in this case, Dr. Liebe, was granted a trade mark licence in 2005 for its toothpaste. In 2014, ÖKO-Test Verlag learned that Dr. Liebe kept affixing the ÖKO-TEST mark on its toothpaste even though the licence had likely ended (the toothpaste on which the label was affixed was different from that tested in 2005). Hence, ÖKO-Test Verlag brought proceedings before the German courts for trade mark infringement. The Higher Regional Court sought guidance from the ECJ.
As regards the first question, the ECJ recalled that, pursuant to Article 9 of the Trade Mark Regulation and Article 5 of the Trade Mark Directive, the holder of a trade mark does not have the right to prohibit third party use of an identical or similar sign on products that are not identical or similar to the products or services for which the trade mark is registered, unless that trade mark has a reputation. The ECJ added that the above rules do not differ when the trade mark at issue is a quality label, especially since the EU trade mark regime provides for the possibility of registering as an EU certification mark specific signs, including those that are capable of distinguishing the goods or services that are certified by the proprietor of the mark in respect of quality from goods and services that are not so certified.
As regards the second question, the ECJ held that ÖKO-Test Verlag could object to the use of its trade mark by a third party for products that are not identical or similar to the products or services for which the trade mark was registered, if it could show that: (i) the trade mark at issue has a reputation; (ii) the use infringes or takes unfair advantage of the reputation or distinctive character of the trade mark; and (iii) the third party cannot prove that its use of the trade mark occurs with due cause.
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