Proprietor has a right to prevent use by a third party of a sign identical to his mark

TRADEMARK LAW

Right of the proprietor of a registered mark to prevent the use by a third party of a sign which is identical to the mark. The fact that the third party at issue uses a sign which is identical with a registered mark in relation to goods which are not its own goods, in that it does not have title to them, is not relevant and can there-fore not mean by itself that that use does not fall under the concept of ‘use’ for the purpose of Article 9(1) of Regulation No 40/94.

"42. Indeed, having regard to the established case-law of the Court concerning the concept of ‘use’ within the meaning of Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (see, inter alia, Case C-206/01 Arsenal Football Club [2002] ECR I-10273; Case C-245/02 Anheuser-Busch [2004] ECR I-10989; Case C-48/05 Adam Opel [2007] ECR I-1017; Case C-17/06 Céline [2007] ECR I-7041 and Case C-533/06 O2 Holdings and O2 (UK) [2008] ECR I-0000, paragraph 57), a provision which is identical to Article 9(1) of Regula-tion No 40/94 and must be interpreted in the same way, in order for the proprietor of a mark to be able to in-voke its exclusive rights, in a situation such as that at issue in the main proceedings, which comes within the scope of that referred to in the abovementioned Articles 5 and 9(1)(a), namely the use by a third party of any sign which is identical with that mark in relation to goods or services which are identical with those for which that mark was registered, it suffices that the fol-lowing four conditions be fulfilled:
– that use is without the consent of the proprietor of the mark,
– it is in the course of trade,
– it is in relation to goods or services,
– the third party uses that sign as a trade mark, that is to say that the use of that sign by the third party must affect or be capable of affecting the functions of the trade mark, in particular its essential function of guar-anteeing to consumers the origin of the goods or services.
43 In light of those conditions for application, the fact that the third party at issue uses a sign which is identical with a registered mark in relation to goods which are not its own goods, in that it does not have title to them, is not relevant and can therefore not mean by itself that that use does not fall under the concept of‘use’ for the purpose of Article 9(1) of Regulation No 40/94."

IPPT20090219, CJEU, UDV v Brandtraders

C-62/08 - ECLI:EU:C:2009:111