Geography Reference
In-Depth Information
6.59
A useful analysis of the defence under the Trade Marks Directive was the ECJ's
decision in Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH . 86
This case concerned the marketing of bottled mineral water and soft drinks
with a mineral water base, which were marketed by Gerolsteiner Brunnen in
Germany. It was also the proprietor of trade marks in Germany including the
word mark 'GERRI' covering those products. Since the mid-1990s Putsch had
marketed soft drinks in Germany bearing labels including the words 'KERRY
SPRING'. Those drinks were manufactured and bottled in Ballyferriter in
County Kerry, Ireland, by the Irish company Kerry Spring Water using water
from a spring called Kerry Spring. Gerolsteiner Brunnen commenced proceed-
ings against Putsch in the German courts for infringement of its trade mark
rights. At first instance, the Landgericht München (Munich Regional Court)
found for Gerolsteiner Brunnen and restrained Putsch from using the distinc-
tive sign 'KERRY SPRING' for mineral water or soft drinks. On appeal by
Putsch the Oberlandesgericht München (Munich Higher Regional Court)
dismissed Gerolsteiner Brunnen's claims and in relation to questions put to the
ECJ, the issues of geographical marks and whether use had been in accordance
with honest practices in industrial or commercial matters was addressed.
6.60
The referring court had found that there existed a likelihood of aural confusion
for the purposes of Art 5(1)(b) of the Trade Marks Directive between GERRI
and KERRY. The Commission emphasised the geographical nature of the
expression 'KERRY SPRING' by noting that Kerry Spring was included in the
list of mineral waters recognised by Ireland for the purposes of Council
Directive 80/777/EEC of 15 July 1980 on the approximation of the laws of the
Member States relating to the exploitation and marketing of natural mineral
waters. 87 The question which the ECJ addressed was whether such a likelihood
of confusion between a word mark and an indication of geographical origin
entitled the proprietor of the trade mark to rely upon Art 5(1)(b) of the Trade
Marks Directive to prevent a third party from using the indication of geo-
graphical origin. In answering that question, the Court noted that the only test
mentioned in Art 6(1) of the Trade Marks Directive was whether the indication
of geographical origin is used in accordance with honest practices in industrial
or commercial matters. The Court held that the 'condition of honest practice
constitutes in substance the expression of a duty to act fairly in relation to the
legitimate interests of the trade mark owner'. 88 The mere fact that there existed
a likelihood of aural confusion between a word mark registered in one Member
State and an indication of geographical origin from another Member State was
86
[2004] ECR I-691; [2004] ETMR 40; [2004] RPC 39.
87
OJ 1980 L 229, p. 1.
88
[2004] ECR I-691 at para 24.
 
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