Walking The Tightrope - Honest Use Of Third Party Trade Marks

Your marketing department has requested advice from you – they want you to clear a proposed advertising campaign for the launch of a new product. The campaign seeks to use, in a descriptive sense, words which are similar to a third party's registered trade mark. You want to ensure that advertising of the new product is as effective as possible, but are aware that overstepping the line could potentially lead to liability for trade mark infringement.

Under European (and indeed UK) trade mark law, use of a third party's trade mark in a purely descriptive manner will not constitute trade mark infringement, providing that such use is in accordance with 'honest commercial practices'. But what does this mean - how far can an advertiser go and when will use of a third party's mark be deemed dishonest?

This article considers two recent cases – one in the UK1 and one in Germany2 - which provide helpful guidance as to the application of Article 6 of the Trade Marks Directive3 (the 'Directive') and what constitutes honest commercial practices.

The Directive

Relevant parts of the Directive are as follows:

Article 5:

(1) The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. (2) Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Article 6(1) of the Directive provides that the registration of a trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:

his own name or address; indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided the third party uses them in accordance with honest practices in industrial or commercial matters.

Hasbro v 123 Nährmittel

The Hasbro case concerned 123 Nährmittel's use of the words 'Play-Dough', in particular the strapline 'The edible play dough' and the phrase 'Play Dough Mix', to market its Yummy Dough product.

Hasbro issued proceedings against 123 Nährmittel...