Geography Reference
In-Depth Information
[2005] F.S.R. 37
at [41] and
Céline Sarl v Céline SA (C-17/06) [2007] E.C.R. I-7041;
[2007] E.T.M.R. 80
at [33].
[115] Secondly, the court should 'carry out an overall assessment of all the relevant
circumstances', and in particular should assess whether the defendant 'can be regarded
as unfairly competing with the proprietor of the trade mark': see
Gerolsteiner [2004]
E.T.M.R. 40
at [26],
Anheuser-Busch [2005] E.T.M.R. 27
at [84] and
Céline [2007]
E.T.M.R. 80
at [35].
[116] Thirdly, an important factor is whether the use of the sign complained of either
gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the
distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as
being in accordance with honest practices: see
Gillette [2005] F.S.R. 37
at [49],
Anheuser-Busch [2005] E.T.M.R. 27
at [83] and
Céline [2007] E.T.M.R. 80
at [34].
[117] Fourthly, a mere likelihood of confusion will not disqualify the use from being in
accordance with honest practices if there is a good reason why such a likelihood of
confusion should be tolerated. Thus in
Gerolsteiner [2004] E.T.M.R. 40
, which was an
art. 6(1)(b) case, the Court of Justice held at [25]:
'The mere fact that there exists a likelihood of aural confusion between a word mark
registered in one Member State and an indication of geographical origin from another
Member State is therefore insufficient to conclude that the use of that indication in the
course of trade is not in accordance with honest practices. In a Community of 15
Member States, with great linguistic diversity, the chance that there exists some
phonetic similarity between a trade mark registered in one Member State and an
indication of geographical origin from another Member State is already substantial and
will be even greater after the impending enlargement.'
6.58
In
Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)
84
Arnold J
ruled that the defendant's use of the white rose emblem met the defence until he
was informed by the plaintiff of the conflict between their two marks.
The principles enumerated by Arnold J were approved by Asplin J in
Evegate
Publishing Ltd v Newsquest Media (Southern) Ltd.
85
That case concerned a
dispute arising out of the launch by the defendant of a farming newspaper called
The Southern Farmer
, which the plaintiff claimed infringed its registered trade
mark 'SOUTH EAST FARMER', which was registered in Class 16 in respect
of 'periodicals, magazines and newspapers'. The judge did not in fact have to
apply the defence as the case turned on whether the registered mark was
sufficiently distinctive to be valid.
84
Ibid.
85
[2013] EWHC 1975 (Ch).
