the matter at hand

In 2010, Buongiorno, an Italian service provider, launched an advertising campaign for a paid subscription to a multimedia messaging service, marketed under the name ‘Club Blinko’. Subscribing to the service granted access to a prize draw, featuring (among others) a ZARA gift card. Upon clicking a banner to enter the draw, subscribers were greeted with a screen showcasing the familiar 'ZARA' logo within a rectangle, evoking the aesthetic of gift cards.

Inditex, the holder of the ZARA trade mark, initiated an infringement action in Spain against Buongiorno, alleging infringement of the ZARA trade mark arguing a likelihood of confusion and the advantage taken of, and detriment caused to, ZARA’s trade mark’s reputation. Buongiorno denied that Inditex’ trade mark rights were infringed, arguing that it could rely on ‘referential use’ since it had made specific use of the ZARA sign not as a trade mark, but to refer to one of the prizes offered to the winners of the prize draw.

In first and second instance, the court dismissed Inditex’s action. Hence, Inditex brought an appeal on point of law before the Tribunal Supremo (Supreme Court, Spain), which is the referring court.

The referring court noted that the provision concerning ‘referential use’ had been repealed and replaced several times during the course of the proceedings. The referring court noted, in this respect, that the wording of Article 6(1) of the First Trade Mark Directive 89/104/EEC was not amended by the Trade Mark Directive 2008/95Directive 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 and, therefore, the applicable national law at the start of the proceedings in 2010. During the course of the proceedings, in 2015, the provision was repealed and replaced by the current Article 14(1) of the Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks.

The referring court indicated that Article 14(1)(c) of Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks makes reference to general conduct, that is to say, “identifying or referring to goods or services as those of the proprietor of that trade mark”, followed by the expression “in particular”, which in turn is followed by a reference to more specific behaviour, that is to say, “where the use of the trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts” (paragraph 22). Given that only the more specific conduct appeared in Article 6(1)(c) of the First Trade Mark Directive 89/104, the referring court asked, in essence, whether the reference to ‘general conduct’ in the Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks makes explicit something that was implicitly included in Article 6(1)(c) of the First Trade Mark Directive 89/104, or whether the scope of ‘referential’ use has been expanded by the current Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks.

the judgment of the ecj

First, the ECJ determines that “the provision applicable ratione temporis at the time of the facts in the main proceedings is Article 6(1)(c) of Trade Mark Directive 2008/95Directive 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, and not Article 6(1)(c) of First Trade Mark Directive 89/104, the latter provision having been replaced by the former”. This decision is based on the fact that the main proceedings took place in 2010, and Trade Mark Directive 2008/95Directive 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 had already come into force by that time (paragraph 39).

The ECJ continues to state that, in order to give a useful answer to the referring court, it has to reformulate the question to the effect that, by that question, the referring court asks, “in essence, whether Article 6(1)(c) of Directive 2008/95 must be interpreted as meaning that it covers any use of the trade mark in the course of trade by a third party for the purpose of identifying or referring to, in accordance with honest practices in industrial or commercial matters, goods or services as those of the proprietor of that trade mark, or only use of that trade mark which is necessary to indicate the intended purpose of a product marketed by that third party or of a service offered by that party” (paragraph 42).

The ECJ reiterates that “the interpretation of a provision of EU law requires account to be taken not only of its wording, but also of the context in which it occurs, as well as the objectives and purpose pursued by the act of which it forms part” (paragraph 43).

The ECJ holds, based on a literal comparison of the two provisions in question, that Article 14(1)(c) of Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks effectively encompassed the entirety of Article 6(1) of Trade Mark Directive 2008/95Directive 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. As a consequence, the scope of the former was more limited than Article 14 (1)(c) of Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, as the former solely covers the use, in the course of trade, of the trade mark where that is necessary to indicate the intended purpose of a product or service (paragraph 47).

The ECJ refers to Gilette (C-228/03) and Portakabin (C-558/08) and recalls that the above interpretation is consistent with the objective of Trade Mark Directive 2008/95Directive 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, namely to reconcile “the fundamental interests of trade-mark protection with those of free movement of goods and freedom to provide services in the internal market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition” (paragraph 49).

Further, the ECJ refers to legislative history and indicates that it is apparent from the Proposal in anticipation of Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks that the purpose of Article 14(1)(c) was to extend the scope of the limitation, and not to merely clarify or specify the parameters of Article 6(1)(c) Trade Mark Directive 2008/95Directive 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 (paragraph 54). In light of this, the ECJ notes that it is for the national courts to determine if the use of the ZARA sign for the advertising campaign is referential use within the meaning of Article 6(1) of the Trade Mark Directive 2008/95Directive 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.  

The ECJ concludes that “Article 6(1)(c) of Directive 2008/95 must be interpreted as meaning that it covers use of the trade mark in the course of trade by a third party for the purpose of identifying or referring to, in accordance with honest practices in industrial or commercial matters, goods or services as those of the proprietor of that trade mark only when such use of the trade mark is necessary to indicate the intended purpose of a product marketed by that third party or of a service offered by that party” (paragraph 67).