Proprietor of a ‘quality label’ trade mark (for consumer information and –advice) is not entitled by Article 9(1)(a) and (b) (former) CTMR and Article 5(1)(a) and (b) of Directive 2008/95 to oppose the affixing, by a third party, of a sign identical with, or similar to, that mark to products that are not similar to, the registered goods or services. For a trade mark to have a “reputation” it is required that a significant part of the relevant public knows that sign: not required that the public must be aware that the quality label has been registered as a trade mark. Proprietor of an ‘quality label’ trade mark (for consumer information and –advice) with a reputation is entitled by Article 9(1)(c) and (b) (former) CTMR and Article 5(2) of Directive 2008/95 to oppose the affixing by a third party of a identical sign to non-similar products, if it takes unfair advantage of the mark concerned, or causes detriment to that distinctive character or reputation when there is no existence of a ‘due cause’, in support of such affixing.
ÖKO-Test Verlag is an undertaking which evaluates products through performance and compliance tests and then informs the public of the results of those evaluations. It sells a magazine that is published in Germany and contains those results, as well as providing general consumer information. Since 2012, ÖKO-Test Verlag has been the proprietor of an EU trade mark (see left side of this article) which represents a label intended to present the results of tests to which products have been subjected. ÖKO-Test Verlag selects the products that it wishes to test and evaluates them on the basis of scientific parameters also selected by it, without requesting the manufacturers’ consent. It then publishes the results of those tests in its magazine. In some circumstances, ÖKO-Test Verlag invites the manufacturer of a tested product to conclude a licensing agreement with it. Under the terms of such an agreement, the manufacturer is authorised, in return for the payment of a sum of money, to affix the quality label with the result (which must be shown in the box whose outline is part of that label) to its products. Such a licence remains valid until a new test is organised for the product concerned by ÖKO-Test Verlag. Dr. Liebe was tested by ÖKO-Test Verlag in 2005 and was rated ‘sehr gut’ (‘very good’). Dr. Liebe concluded a licensing agreement with ÖKO-Test Verlag in the same year. In 2014, ÖKO-Test Verlag became aware that Dr. Liebe was marketing one of its products with the following packaging:
ÖKO-Test Verlag brought infringement proceedings against Dr. Liebe before the Regional Court in Germany, which held that Dr. Liebe had infringed the ÖKO-TEST marks. In appeal, the Oberlandesgericht Düsseldorf decided to stay the proceedings and refer two questions to the Court of Justice for preliminary ruling, because it is not clear that ÖKO-Test Verlag may rely on its exclusive right referred to in Article 9(1)(a) and (b) of CTMR and Article 5(1) of Directive 2008/95 against Dr. Liebe.
The Court answers the questions as follows:
“1. Article 9(1)(a) and (b) of Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark, and Article 5(1)(a) and (b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that they do not entitle the proprietor of an individual trade mark consisting of a quality label to oppose the affixing, by a third party, of a sign identical with, or similar to, that mark to products that are neither identical with, nor similar to, the goods or services for which that mark is registered.
2. Article 9(1)(c) of Regulation No 207/2009 and Article 5(2) of Directive 2008/95 must be interpreted as meaning that they entitle the proprietor of an individual trade mark with a reputation, consisting of a quality label, to oppose the affixing, by a third party, of a sign identical with, or similar to, that mark to products that are neither identical with, nor similar to, the goods or services for which that mark is registered, provided that it is established that, by that affixing, the third party takes unfair advantage of the distinctive character or the reputation of the mark concerned or causes detriment to that distinctive character or reputation and provided that, in that case, the third party has not established the existence of a ‘due cause’, within the meaning of those provisions, in support of such affixing.”
C‑690/17 - ECLI:EU:C:2019:317