IP Trademark Cases

C-3/91: Exportur

Protection of Geographical Indicators: The court clarified that while geographical names can be protected, this protection cannot be used in a way that restricts trade between Member States.

Court Ruled: reserving names in this manner could harm consumers by preventing them from accessing products they might prefer and that, in this case, the names were used by French companies to market products that were known and appreciated by the public.

C-63/97: BMW v. Deenik

Ruled that a third-party garage can use the BMW trademark to advertise the repair and maintenance of BMW cars, provided it does not create the impression that there is a commercial link or special affiliation with BMW's official distribution network.

C-108/97: Chiemsee

Established that a geographical name is not automatically unregistrable as a trademark if it has acquired distinctiveness through use.

Ruled that for a mark to be registered, the public must associate the name with the trademark owner's products, rather than believing it simply indicates geographical origin. The court determined that an overall assessment of the evidence, including duration, territory, extent, market share, and advertising volume, is necessary to establish this acquired distinctiveness.

C-273/00: Sieckmann

Ruled that a smell, or olfactory mark, cannot be registered as a trademark in the EU because it cannot be represented graphically in a way that is clear, precise, and durable. The court specified that a chemical formula, a written description, or a sample of the scent are insufficient to meet the criteria for graphical representation required for trademark registration. 

Graphical representation is mandatory: For a sign to be registrable as a trademark, it must be capable of being represented graphically. This was the core issue in the case.

Scent marks failed the test

Chemical formulas are insufficient

Written descriptions are not precise enough

Physical samples are not a graphical representation

C-265/00: BioMild

Composite word mark is descriptive of its elements, when combined, do not create a perceptible difference from the sum of their individual meanings. 

The case concerned Campina Melkunie's application to register "BIOMILD" for milk products, which the Benelux-Merkenbureau had initially refused. The court clarified that a neologism (a newly coined word) created from descriptive elements would be considered descriptive unless it was sufficiently different to go beyond the mere sum of its parts. 

 A composite word is descriptive if it does not create a "perceptible difference" compared to the combination of its parts.

C-104/01: Libertel

A color can be registered as a trademark, even without spatial definition, if it can be represented graphically in a way that is clear, precise, and objective. To be registered, a color mark must be capable of distinguishing one company's goods or services from another's, a test of its distinctiveness that also considers the public interest in not unduly restricting the availability of colors for other traders. The Court also confirmed that a verbal description of a color, an internationally recognized color code, or a combination thereof, can satisfy the graphic representation requirement. 

Distinctiveness test: A color mark is not considered distinctive unless it can be used to distinguish the goods or services of one company from those of another

C-408/01: Adidas v. Fitnessworld

Adidas could not win its trademark infringement claim based on a "likelihood of confusion" with Fitnessworld's two-stripe motif because the public viewed the two stripes as mere decoration. However, the Court clarified that the lack of confusion is not the only factor; if the public establishes an "associative link" between the sign and the mark, or if the mark is so well-known that the use of the similar sign takes unfair advantage of its reputation, infringement could still be found. The decision affirmed that a sign can be protected even if it is considered decorative, provided a link between the sign and the mark is established, even if it does not lead to direct confusion.

"Associative link" theory: The court clarified that a sign can still be an infringement even if it isn't a source of confusion. If the use of the similar sign is so similar to a well-known mark that the public establishes an "associative link" between the two, it can be considered infringement under the ™ directive 

C-100/02: Gerolsteiner Brunnen

Clarified a trademark proprietor's right to prevent the use of a geographical indication that is similar to their trademark, specifically when there is a likelihood of "aural confusion". The court ruled that the trademark owner could only prevent the use of the geographical indication if its use was not in accordance with honest practices, and the national court must conduct an overall assessment of all relevant circumstances, including the bottle's shape and labeling, to determine if it constituted unfair competition.

C-252/07: Intel

The concept of trademark dilution under the EU Trade Marks Directive. The court ruled that establishing a link between a later mark and an earlier, well-known mark is required for dilution to occur, even without consumer confusion. The case clarified that a "link" can be established by assessing the degree of similarity between the marks and the goods or services, the strength of the earlier mark, and other relevant factors, even if there is no likelihood of confusion. 

• A "link" between the two marks must be established in the public's mind.

• This link does not require a likelihood of confusion, though confusion would certainly establish the link.

• The existence of a link must be assessed globally, considering factors such as the degree of similarity between the marks, the strength of the earlier mark's reputation, and the degree of similarity between the goods or services.

C-301/07: Pago

Established that a trademark can have a "reputation in the Community" even if its reputation is limited to a single Member State, such as Austria.

One Member State can constitute a "substantial part of the territory of the Community" for the purposes of determining trademark reputation, which is a key factor in anti-dilution protection. This means the mark is not required to be known across the entire EU, only in a significant portion of it. 

C-529/07: Lindt & Sprüngli

Registration of a three-dimensional Community trade mark for Lindt's chocolate Easter bunny.

whether Lindt had acted in bad faith by attempting to register the mark to prevent competitors,

finding of bad faith requires an intention to act against ethical standards, which must be determined on a case-by-case basis. 

simply registering a mark to prevent competitors from using similar signs is not automatically considered bad faith.

Bad faith is a subjective state of mind

determined by looking at all relevant objective evidence.

length of time the competitor has been using the mark,

its reputation,

and the applicant's own knowledge of the competitor's activities

C-487/07: L’Oréal/Bellure

Using well-known registered trademarks for perfumes in "smell-alike" product advertising constitutes an infringement of the trademark. The ECJ determined that even without causing confusion or damage, an advertiser takes "unfair advantage" of the trademark's reputation if its product is presented as an "imitation or replica". The case involved L'Oréal's action against companies selling imitation perfumes, which used comparison lists to suggest their products smelled like L'Oréal's, a practice the ECJ found unlawful.

Joined cases C-236-38/08: Google France

Search engines like Google do not infringe on trademark rights when they allow advertisers to use a competitor's trademark as a keyword to trigger ads. This means it is permissible for Google to show ads based on trademarked keywords, but the advertiser must not cause confusion with the brand itself. This decision was a significant victory for search engines in a landmark 2010 case. 

The condition: The ruling has a crucial caveat: the advertiser's ad must not be presented in a way that makes it look like it comes from the trademark owner, thereby causing confusion in the marketplace.

C-119/10: Red Bull v. Winters

Ruled that a company that merely fills cans with a beverage on a client's instructions is not "using" a trademark in the course of trade, even if the cans bear a sign similar to a protected trademark. The Court stated that since Winters was a service provider and didn't sell or distribute the product, the company was not apparent to the consumer in a way that would link its services to the signs on the cans, and therefore did not infringe on Red Bull's trademark rights.

Joined Cases C-4/10 and C-27/10: BNIC v. Gust. Ranin Oy

Ruled that Regulation (EC) No 110/2008 on geographical indications (GIs) for spirit drinks has retrospective effect, meaning it applies to the validity of trademarks containing a GI that were registered before the regulation's entry into force. The Court also held that the regulation precludes the registration of a trademark containing a GI or a translation of a GI if the product does not meet the specifications for that indication

Retrospective effect: The regulation applies to the validity of trademarks even if they were registered before the regulation was enacted.

Registration prohibition: The regulation prohibits the registration of trademarks that contain a GI or its translation if the product does not meet the GI's specifications

C-98/11 P: Lindt

Upheld a previous decision that the Lindt chocolate bunny shape, including its red ribbon and bell, is not distinctive enough for trademark protection across the EU. The court ruled that Lindt's arguments about acquired distinctiveness were not sufficiently supported by evidence, and the mark lacked the necessary inherent distinctiveness to function as a trademark. 

Distinctiveness: The court agreed with the General Court that the shape of the bunny, along with the red ribbon and bell, contained elements common to other chocolate animals and did not depart significantly from industry norms.

Acquired distinctiveness: Lindt failed to prove that the mark had become distinctive through use across the entire European Union, not just in specific member states like Germany.

C-421/13: Apple Store

Distinctive: meaning it must significantly depart from the norm or customs of the retail sector. The ECJ focused on the requirements for trademark registration, particularly the need for a sign to be capable of distinguishing an undertaking's goods or services from those of others.

C-75/15: Viiniverla

clarified that an "evocation" of a GI can occur even if the product's true origin is indicated or if the consumer is not misled about the product's origin. The key is that the name creates an association in the consumer's mind with the protected GI, potentially exploiting its reputation. 

Evocation vs. likelihood of confusion: The court found that evocation can occur even without a likelihood of confusion among consumers. The fact that the misleading nature of "Verlados" was not capable of misleading consumers was irrelevant to the assessment of evocation.

C-163/16: Christian Louboutin's 

Ruled that Christian Louboutin's famous red sole does not consist exclusively of a shape, therefore it can be registered as a trademark

The court's decision affirmed that while the red color is applied to a specific part of the shoe, the sign at issue does not consist "exclusively of a shape" as required by the law for a trademark to be refused on that ground.

C-393/16: Champagner Sorbet

Using the name "Champagner Sorbet" for a sorbet that contains actual champagne as an ingredient can be an unlawful evocation of the "Champagne" Protected Designation of Origin (PDO) if the use exploits its reputation

The Court clarified that this is a violation of EU regulations protecting PDOs, even if the product is not a wine, as long as the name evokes the protected product and the use is not justified

C-44/17: Glen Buchenbach

Ruled that using "Glen" in the name of a German whisky was misleading and infringed on the "Scotch Whisky" geographical indication. The European Court of Justice (CJEU) determined that the term "Glen," widely associated with Scotch whisky, creates a false impression of origin for consumers, despite the product's label stating it is a German product. The Court held that context does not negate the false impression created by the name itself. 

C-84, 85, 97/17 P: Kitkat

Ruled that Nestlé's evidence of acquired distinctiveness was insufficient because it did not adequately cover all member states, specifically mentioning Belgium, Greece, Ireland, and Portugal. 

CJEU's confirmation: The CJEU upheld the General Court's judgment, clarifying the "acquired distinctiveness" requirement.

While evidence doesn't need to be submitted for each individual member state, it must demonstrate acquired distinctiveness "throughout the EU".

Evidence that fails to cover part of the EU, even a single member state, is insufficient.

The court noted that evidence could be presented on a regional basis if a group of member states were treated as one market, but Nestlé's evidence still did not cover all states.

C-614/17: Manchego

Ruled that  figurative signs (like images) can evoke a protected geographical indication (PDO), even if the product is made in the correct region but doesn't adhere to the PDO specifications. The court determined that using images of Don Quixote, windmills, and landscapes associated with La Mancha on cheese could lead the average consumer to associate it with the protected 'Queso Manchego' PDO, thus constituting an unlawful "evocation". The ruling clarified that this protection applies even to producers within the region and also confirmed that the "average consumer" includes consumers in the Member State of origin.

C-371/18: Sky v Skykick

Ruled that a trademark cannot be declared invalid for lack of clarity and precision in its goods and services list, but that a declaration of bad faith in registration could be considered in exceptional circumstances, particularly if the owner had no intention to use the mark. Subsequent UK court decisions have had to address the findings in light of the CJEU ruling and the specific UK law concerning bad faith.

C-432/18: Aceto Balsamico di Modena

Ruled that the protected geographical indication (PGI) "Aceto Balsamico di Modena" does not prevent the use of its individual, non-geographical components like "Aceto" and "Balsamico". The protection is for the entire name, so German companies can use terms like "Deutscher Balsamico" for vinegars made from Baden wines, as long as they don't misuse the full PGI name. 

Generic terms: The court determined that "Aceto" (vinegar) and "Balsamico" are generic terms that describe a type of product and are therefore not protected on their own.

C-783/19: Champanillo

Ruled that the use of "CHAMPANILLO" for tapas bars infringes the "Champagne" Protected Designation of Origin (PDO) because it evokes the protected name, even though "Champanillo" is used for a service (catering) rather than a directly comparable product

The court found that protection against evocation extends to services and does not require the products to be identical or similar, but rather that the use of the name creates a clear and direct link in the mind of the average consumer. This judgment widened the scope of protection for PDOs to include services that may have an indirect or direct connection with the protected product. 

Evocation occurs when the use of a name creates a sufficiently clear and direct link in the mind of the average consumer to the protected PDO

T-488/20: Guerlain

the General Court of the European Union overturned the EUIPO's decision and granted a 3D trademark to Guerlain for its "Rouge G" lipstick shape. The court found that the lipstick's unique, non-cylindrical shape with no flat surfaces and a distinctive raised element was visually different from common lipstick shapes, making it inherently distinctive enough to be trademarked. The ruling reversed the EUIPO's finding that the shape lacked distinctiveness because it didn't "depart significantly from the norm and customs of the sector". 

C-251/95: Puma/Sabel

Clarified the concept of "likelihood of confusion" in trademark law, ruling that a mere "likelihood of association" between two marks is not enough to refuse a trademark on its own. Instead, the EU Court of Justice established that the assessment of trademark similarity must be a global appreciation of all relevant factors, including visual, aural, and conceptual similarities, based on the overall impression of the marks as perceived by the average consumer. 

Distinctive character: The distinctive character of the earlier mark is crucial. A more distinctive mark leads to a greater risk of confusion. The more distinctive the mark is, either inherently or through reputation, the greater the likelihood of confusion.

Likelihood of association vs. confusion: A "likelihood of association" is not a substitute for a "likelihood of confusion." The association between marks must be strong enough to lead the public to believe that the goods come from the same or economically linked undertakings.

C-76/24: ECJ Tradeinn/PH

Ruled that a national trademark owner can prohibit a third party from "stocking" infringing goods in another Member State for the purpose of later offering them for sale in the protected country. The court clarified that "stocking" includes both direct and indirect control over the goods, such as when an operator has indirect control by directing a third-party service provider (like a warehouse) to store the goods.

C-240/18 E-5/16: EFTA court Vigeland Park

Court held that a trade mark may be refused under Article 3(1)(f) if the registration of a public-domain artwork poses a “genuine and sufficiently serious threat to a fundamental interest of society.”

Court clarifies that:

• lack of distinctiveness,

• descriptiveness, or

• shape exclusions

May not always prevent registration in all classes of goods or services.
Public policy/morality (Art. 3(1)(f)), however:

• cannot be overcome by acquired distinctiveness, and

is not tied to specific goods/services,
making it a more robust instrument to prevent improper monopolisation

Inter IKEA Systems BV v Vlaams Belang (C-293/23)

• Trademark Infringement / "Due Cause"

• The Advocate General concluded that Vlaams Belang’s use of IKEA’s reputed marks in a political campaign did not constitute “due cause”. The use was primarily to attract attention to unrelated political messaging, exploiting the mark’s goodwill, and therefore amounted to unfair advantage. The determination of ‘due cause’ is ultimately up to national courts.