The matter at hand

The German company ÖKÖ-Test Verlag is specialized in evaluating and testing consumer products and publishes a magazine in Germany reporting the results of its tests. The tests are based on certain scientific parameters and are selected without the manufacturer’s consent.

ÖKÖ-Test Verlag is the proprietor of an EU trade mark and a German national mark, both consisting of a sign that represents a quality label for products that have been tested. Both marks are registered as individual marks for ‘printed matter and services related to conducting tests and providing consumer information’. On the basis of these marks, ÖKÖ-Test Verlag concludes licensing agreements with manufacturers, allowing them to affix the quality label to the packaging of tested products.

In 2005, ÖKÖ-Test Verlag concluded a licensing agreement with Dr. Liebe, a company involved in the trade of toothpastes, allowing the use of the quality label for one of Dr. Liebe’s toothpastes which was tested as ‘very good’. In 2014, ÖKÖ-Test Verlag became aware that Dr. Liebe also used the quality label for a toothpaste that was different from the one tested in 2005. Claiming that Dr. Liebe thereby infringed the trade mark rights in the quality label, ÖKÖ-Test Verlag brought infringement proceedings before the Landgericht Düsseldorf (Regional Court Düsseldorf). That court awarded the infringement action, rejecting Dr. Liebe’s argument that it used the quality label for goods different from the goods and services for which the quality label was registered. In the appeal against that decision, the Oberlandesgericht Düsseldorf (Higher Regional Court Düsseldorf) referred questions to the ECJ. The referring court asked whether, under Article 5(1)(a) and (b) 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, the proprietor of an individual trade mark which serves as a quality label can oppose the affixing thereof by a third party to a product not identical or similar to the goods or services for which the trade mark is registered. As to Article 5(2) 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, the referring court wanted to know whether the concept of a reputation requires that the relevant public knows that the quality label is registered as a trade mark.

The judgment of the ECJ

The ECJ first of all reiterates that under Article 5(1)(a) and (b) 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, a comparison must be made between the goods or services for which the trade mark is registered and the goods or services ‘in relation to’ which the contested sign is used. Citing Adam Opel (C-48/05), the ECJ further recalls that the goods or services ‘in relation to’ which the third party uses the contested sign are the goods marketed or services supplied by that third party. Although the ECJ admits that it accepted an exception to this principle in Daimler (C-179/15) and BMW (C‑63/97), the ECJ stresses that this exception applies only where the third party uses the sign to identify the goods of the trade mark proprietor “where those goods constitute the actual subject matter of services provided by that third party” and “there is a specific and indissociable link between the goods bearing the trade mark and those services” (paragraph 31), in particular where the third party uses the sign “in order inform the public that he has specialised or is a specialist in” the goods of the trade mark proprietor (paragraph 32). The ECJ rules that “apart from that specific case, Article 9(1)(a) of [Trade Mark] Regulation 207/2009 and Article 5(1)(a) of [Trade Mark] Directive 2008/95 must be interpreted as covering the use of a sign identical to the trade mark in respect of goods marketed or services supplied by the third party that are identical to those for which the trade mark is registered” (paragraph 31).

Applying these principles, the ECJ holds that there does not appear to be any indication to suggest that Dr. Liebe presents itself as specialist in the field of product testing or that there is a specific and indissosciable link between the marketing of toothpastes and the economic activity of ÖKÖ- Test Verlag. Consequently, the ECJ considers that Dr. Liebe uses the quality label for toothpastes only and therefore not for goods or services identical or similar to those for which the quality label is protected within the meaning of Article 5(1)(a) and (b) 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 to the argument that such interpretation would unduly reduce the protection of individual marks consisting of a quality label, the ECJ notes that Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark and Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark also provide for the possibility of registering a sign as a certification mark, which, in contrast to an individual trade mark, does serve to distinguish the goods or services that are certified by the proprietor of the mark in respect of quality from goods and services that are not so certified.

In light of these considerations, the ECJ rules that “Article 9(1)(a) and (b) of [Trade Mark] Regulation 207/2009 and Article 5(1)(a) and (b) of [Trade Mark] Directive 2008/95 must be interpreted as meaning that they do not entitle the proprietor of an individual trade mark consisting of a quality label to oppose the affixing, by a third party, of a sign identical with, or similar to, that mark to products that are neither identical with, nor similar to, the goods or services for which that mark is registered” (paragraph 43).

With regard to Article 5(2) 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, which does not require identity or similarity of the goods or services, the ECJ recalls, citing PAGO International (C‑301/07), that the degree of knowledge required under that provision must be considered to be reached when the trade mark is known by a significant part of the public targeted by the trade mark proprietor, in this case the public ÖKÖ- Test Verlag targets with its consumer information and magazine. The ECJ furthermore rules that it is not required that the relevant public knows that the quality label is a registered trade mark. It is sufficient that a significant part of the relevant public knows the quality label.