ECJ Rules On Trade Mark Boundaries

by Ulrika Lomas, for LawAndTax-News.com, Brussels

14 January 2004

In a judgement issued on January 7, the European Court of Justice (ECJ) ruled that trademark owners in the European Union cannot prevent others from using similar sounding geographical indications as their marks, provided that they are used "in accordance with honest practice".

Ruling in Gerolsteiner Brunnen & Co v Putsch last week, the ECJ argued that the former beverage firm could not prevent the latter from using the name "Kerry Springs" for its mineral water product merely because it could be confused with Gerolsteiner's "Gerry" trademark, also used to market waters and non-alcoholic beverages.

"The mere fact that there exists a likelihood of aural confusion between a word mark registered in one member state and an indication of geographical origin from another member state is insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practice," the ECJ observed.

Given that Putsch's trademark represents a geographical indication, and in view of an earlier ECJ decision which rules out infringement if the allegedly infringing sign is being used honestly in the commercial sphere, the European court dismissed Gerolsteiner Brunnen's claim.

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