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held to be 'insufficient to conclude that the use of that indication in the course
of trade is not in accordance with honest practices'.
89
The
Gerolsteiner
case was applied and amplified by the ECJ in Case C-245/02
Anheuser-Busch Inc v Bud˘jovický Budvar
.
90
It held that:
6.61
In assessing whether the condition of honest practice is satisfied, account must be taken
first of the extent to which the use of the third party's trade name is understood by the
relevant public, or at least a significant section of that public, as indicating a link
between the third party's goods and the trade-mark proprietor or a person authorised to
use the trade mark, and secondly of the extent to which the third party ought to have
been aware of that. Another factor to be taken into account when making the
assessment is whether the trade mark concerned enjoys a certain reputation in the
Member State in which it is registered and its protection is sought, from which the third
party might profit in selling his goods.
91
In the case, which involved a complaint about the use of the plaintiff 's trade
mark on the defendant's beer bottles, the ECJ observed that it is for the national
court to carry out an overall assessment of all the relevant circumstances, 'which
include the labelling of the bottle in order to assess, more specifically, whether
the producer of the drink bearing the trade name can be regarded as unfairly
competing with the proprietor of the trade mark'.
92
6.62
The proposed regulation to amend the Community Trade Marks Regulation
proposes the addition to Art 12 a definition of 'in accordance with honest
practices' in the following terms:
6.63
2.
The use by a third party shall be considered not to be in accordance with honest
practices, in particular in any of the following cases:
(a)
it gives the impression that there is a commercial connection between the
third party and the proprietor of the trade mark;
(b)
it takes unfair advantage of, or is detrimental to, the distinctive character or
the repute of the trade mark without due cause.
(d) Generic marks
The Community Trade Mark Regulation and the Trade Marks Directive
exclude the registration of trade marks which consist exclusively of signs or
indications which have become customary in the current language or in the
bona fide and established practices of the trade. Where a sign designating a
6.64
89
Ibid, at para 25.
90
[2005] ETMR 286.
91
Ibid, at para 83.
92
Ibid, at para 85.
