ECJ decision in the CÉLINE case: Another frustrating non-judgment

Again, the ECJ fails to give trademark owners clear guidance in relation to the scope of their mark The ECJ has handed down its long-awaited judgment in the CELINE matter, a referral case from the Cour d'Appel de Nancy (France). It deals with the question whether the unauthorized use of a mark to designate a shop or company, without however using the mark for any goods or services offered, is to be regarded as use of the sign as a trademark against which the proprietor of the mark may take legal action, and whether the proprietor may be barred by Art. 6 (1) (a) of the Directive (and the respective national provisions), according to which the proprietor of a trademark shall not be entitled "to prohibit a third party from using, in the course of trade, his own name or address." The claimant, Céline SA, is a company incorporated under that name since 1928. Its principal activity is the creation and marketing of articles of clothing and fashion accessories. It is the proprietor of a word mark "CÉLINE", applied for on 19 April 1948 and registered, inter alia, for "clothes and shoes", which remains in full force. The defendant, Celine SARL, claims that its predecessor-in-title was registered on 25 September 1950 in the Commercial and Companies Register in Nancy in relation to the operation of a menswear and womenswear business, trading as ‘Céline’. The company itself was registered on the companies register in 1992 in order to operate a business trading in ready-to-wear garments, lingerie, clothing, furs, apparel and various accessories under that name. CÉLINE SA filed a claim with the TGI of Nancy and obtained an injunction and damages. Céline SARL appealed the judgment on the grounds that it was not using the mark to distinguish any of the goods for which it was protected, but only to designate the company or shop, which use, in addition, was protected by Art. 6 (1) (a) of the TM Directive. The Cour d'Appel submitted the question to the ECJ. __________ The question may appear simple at first sight: Both companies are obviously using the same sign, and both are operating in the same line of business (clothing). However, the ECJ has lately shown a tendency towards a case-by-case approach in assessing whether a mark is being used as a trademark, i.e. in its function to distinguish, in the course of trade, goods and services from goods and services of others. Even where the proprietor goes against the use of an identical sign for the very goods and/or services for which the mark is registered, the ECJ ruled that the owner of the tradmark may only prevent such use if the following four conditions are satisfied: that use must be in the course of trade; it must be without the consent of the proprietor of the mark; it must be in respect of goods or services which are identical to those for which the mark is registered, and it must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to…