OPINION OF ADVOCATE GENERAL
CAMPOS SÁNCHEZ-BORDONA
delivered on 17 January 2019 (1)
Case C‑690/17
ÖKO-Test Verlag GmbH
v
Dr Rudolf Liebe Nachf. GmbH & Co.KG
(Request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany))
(Reference for a preliminary ruling — European Union trade mark — Rights conferred by the trade mark — Right to oppose the use by a third party of an identical or similar sign — Unauthorised affixing to a product of a trade mark acting as a quality test label)
1. This request for a preliminary ruling concerns whether the proprietor of a trade mark (ÖKO-TEST) made up of a quality label (2) and registered in order to identify a number of services is entitled to prohibit its use by a third party which has used it on the packaging of a toothpaste (Aminomed) without the trade mark proprietor’s consent.
2. In circumstances such as these, in which there does not appear to be any identity or similarity between the dental products and the services provided by the proprietor of the quality label, is any purpose served in resorting to actions for infringement of trade mark law? That, in essence, is the question raised by the referring court with a view to resolving the issues arising from the fact that the proprietor of the ÖKO-TEST trade mark cannot bring against anyone using that quality label without its consent an action for breach of contract or any other action based on the German rules governing unfair competition.
I. Legislative framework
A. EU law
3. The legislation on the protection of trade marks is comprised of both the measures aimed at harmonising national laws (in particular, Directive 2008/95/EC) (3) and the provisions regulating the EU trade mark (Regulation No 207/2009) (4) and applies to operators that choose to acquire this form of industrial property right.
1. Directive 2008/95
4. Article 5(1) to (3) provides:
‘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:
(a) 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;
(b) 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; the likelihood of confusion 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.
3. The following, inter alia, may be prohibited under paragraphs 1 and 2:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
…’
2. Regulation 2017/1001
5. Article 9(1) to (3) (5) states:
‘1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.
2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;
(b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union 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 EU trade mark.
3. The following, in particular, may be prohibited under paragraph 2:
(a) affixing the sign to the goods or to the packaging of those goods;
(b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder;
…’
B. German law. Gesetz über den Schutz von Marken und sonstigen Kennzeichen (6)
6. In Paragraph 14(3) of that Law, the Federal Republic of Germany avails itself of the option provided for in Article 5(2) of Directive 2008/95 in relation to trade marks with a reputation.
II. Facts giving rise to the dispute and questions referred for a preliminary ruling
7. Öko-Test Verlag GmbH is the publisher of ‘ÖKO-TEST’, a magazine in circulation throughout Germany. In addition to providing general consumer information, it publishes analyses of goods and services carried out by independent laboratories. Those tests and analyses are undertaken without the knowledge of the manufacturers concerned.
8. On 23 April 2012, Öko-Test Verlag registered the following trade mark, at national level, with the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) and, on 31 August 2012, at EU level, with the European Union Intellectual Property Office (EUIPO): (7)
9. The services (8) covered by the trade mark that are most relevant to this dispute appear in classes 35 (consumer information and consultancy with regard to the selection of goods and services using test and investigation results; conduct and assessment of opinion polls and surveys) and 42 (conduct and assessment of science-based product testing and service reviews; conduct and assessment of quality analyses; conduct and assessment of technical testing and analyses).
10. Öko-Test Verlag finances itself primarily from the revenue it generates from sales of its magazine and from licensing agreements for the use of its trade mark which it enters into with the manufacturers of the products it has analysed. Licensees receive a file containing the ÖKO-TEST quality label and use it on their products, once they have entered the test result and its source in the blank space below the label. (9)
11. The licensing agreement expires either when the results of earlier tests carried out on the licensee’s product are superseded by a more recent analysis (based on new parameters), even if the licensee did not submit its product for retesting, (10) or when the properties or characteristics of the product change.
12. The company Dr Rudolf Liebe Nachf. GmbH & Co.KG (11) manufactures toothpastes, including Aminomed. Öko-Test Verlag analysed a number of toothpastes including Aminomed Fluorid-Kamillen-Zahncreme (Aminomed fluoride/camomile toothpaste) and published the test results in the Jahrbuch Kosmetik 2005 (2005 Cosmetics Yearbook), where it was given a ‘very good’ (‘sehr gut’) rating.
13. In August 2005, the two undertakings concluded a licensing agreement on the use of the ÖKO-TEST quality label (which had not yet been registered as a trade mark), following which Dr Liebe began using that quality label to advertise its product.
14. In October 2014, Öko-Test Verlag became aware that Aminomed was being distributed in the manner indicated below:
The packaging had been changed from its original format.
15. Öko-Test Verlag brought an action for infringement of trade mark law before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany). It claimed that the licensing agreement did not entitle Dr Liebe to use the ÖKO-TEST quality label because: (a) that label had not formed the subject of the agreement; (b) since a later toothpaste analysis based on new parameters had been published in 2008, Dr Liebe was not authorised to use the sign in question for that reason alone; and (c) the product being sold by Dr Liebe under that sign was not the same as that actually tested for the purposes of the licensing agreement, given that its name, description and packaging, at least, had changed.
16. Dr Liebe opposed the action on the ground that the licensing agreement remained in force and it was entitled to use the ÖKO-TEST quality label. It further stated that, since the national and EU trade marks were registered, it had not used them again.
17. The Landgericht (Regional Court) took the view that Dr Liebe was using the trade mark at issue for the ‘consumer information and consultancy’ service and that it could no longer rely on the licensing agreement. Since Dr Liebe had not provided specific information on the cessation of production, the court presumed that the defendant had continued to market the toothpaste under the aforementioned quality label even after that trade mark was registered. It therefore ordered Dr Liebe to stop using the ÖKO-TEST quality label in the retailing of Aminomed and to withdraw it from the market.
18. Dr Liebe appealed against that judgment to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf), which, in the order for reference: (a) concurs with the court of first instance that the licensing agreement expired some time ago; and (b) recognises, therefore, that Dr Liebe was using the trade mark in the course of trade without the trade mark proprietor’s consent.
19. In the view of the referring court:
– if it were to accept the proposition that the trade mark at issue has been used in connection with a product (toothpaste), it would have to reject the claims made by Öko-Test Verlag on the basis of Article 9(2)(a) and (b) of Regulation 2017/1001, since neither of the two registrations of ÖKO-TEST included toothpaste or ‘similar goods’.
– Öko-Test Verlag could rely on the right it enjoys as proprietor of the trade mark under that article only if the use of a quality label on a product were regarded as being the same as its use in connection with one of the services protected by that trade mark, such as ‘consumer information and consultancy with regard to the selection of goods and services’.
20. The referring court also points out that, owing to the differences between them, quality labels are not comparable with quality seals and are not suitable for registration as certification marks. (12) It notes, however, that, as the Court found in Gözze, (13) consumers’ perception of a quality label is similar to their perception of a quality seal. The fact that the quality label is affixed to the product guarantees a certain level of quality which has been tested, but it does not guarantee that that product was manufactured under the supervision of the proprietor of the trade mark constituted by the quality label. Consequently, the public does not associate the ÖKO-TEST trade mark with the manufacturers of the products analysed because it knows and attaches particular importance to the fact that the proprietor of that trade mark is independent of those manufacturers.
21. If the affixing of the quality label were regarded as use in connection with the registered service, Dr Liebe would have infringed the trade mark, (14) from the point of view of both its function as an indication of origin and its function as a guarantee of quality. If, on the other hand, the answer to the first question referred for a preliminary ruling is in the negative, the national court is faced with another point of uncertainty, this time in relation to Article 9(2)(c) of Regulation 2017/1001 and Article 5(2) of Directive 2008/95.
22. After all, although the ÖKO-TEST trade mark has a reputation in the territory of the Federal Republic of Germany, it is known not as an industrial property sign but as a quality label. It would be difficult therefore, in the light of the judgment in Gözze, to take the view that Dr Liebe used that trade mark in connection with the toothpaste product rather than in connection with the service provided by Öko-Test Verlag. Hence the referring court’s inquiry as to whether an individual mark can be regarded as having a reputation where its reputation is due to its nature as a quality label.
23. In this regard, it goes on to say that the case-law on trade marks with a reputation (15) does not provide it with a sufficient foundation on which to determine whether the marketing of the toothpaste under the quality label constitutes a use such as to infringe rights, or, in particular, whether such an infringement may be constituted by use other than as a trade mark. It ends by noting that instances of abuse of reputation or image transfer, which the aforementioned provisions prohibit, also occur where the third party is not using the individual mark in order to guarantee the identity of the goods as originating from its undertaking.
24. It is in those circumstances that the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) refers the following questions to the Court of Justice for a preliminary ruling:
‘(1) Is an individual trade mark used in such a way as to infringe rights for the purposes of point (b) of … Article 9[2] of … Regulation [2017/1001] or point (a) of the second sentence of Article 5(1) of … Directive [2008/95] in the case where
– the individual trade mark is affixed to a product in respect of which the individual trade mark is not protected;
– the affixing of the individual trade mark by a third party is perceived by the public as a [“quality mark”], which is to say that, although the product has been manufactured and placed on the market by a third party not acting under the control of the trade mark proprietor, the trade mark proprietor has tested some of the characteristics of that product and, on that basis, given it a particular rating shown on the [quality mark], and
– the individual trade mark is registered for, inter alia, “consumer information and consultancy with regard to the selection of goods and services, in particular using test and investigation results and by means of quality judgments”?
(2) Should the Court of Justice answer Question 1 in the negative:
Is an individual trade mark used in such a way as to infringe rights for the purposes of point (c) … of Article 9[(2)] of … Regulation [2017/2001] and Article 5(2) of … Directive [2008/95] in the case where
– the individual trade mark has a reputation only as a [quality mark] as described in Question 1; and
– the individual trade mark is used as a [quality mark] by a third party?’
III. Procedure before the Court of Justice
25. The order for reference was registered at the Court of Justice on 8 December 2017. Written observations have been submitted by Öko-Test Verlag, the German Government and the European Commission, which parties took part in the hearing held on 7 November 2018, which was also attended by Dr Liebe.
IV. Legal analysis
A. Preliminary observations
26. Although the referring court asks about the applicability of Article 9 of Regulation 2017/1001 and Article 5 of Directive 2008/95, it points out that the action that gave rise to the dispute was concerned with the EU trade mark and only in the alternative with the national trade mark. (16) Consequently, in the interests of ease of reading, my analysis will look primarily at the provisions of Regulation 2017/1001, concerning EU trade marks, although the results of that analysis will be amenable to extrapolation, mutatis mutandis, to the corresponding provisions of Directive 2008/95. (17)
27. As I have already said, the referring court has ruled out the possibility that the legal protection sought by Öko-Test Verlag can be granted to it by way of an action for breach of contract (it states that the licensing agreement ceased to bind both parties some time ago) (18) or by an action for unfair competition, since the latter requires the applicant and defendant undertakings to be in competition with each other, which is not the case here. (19)
28. Just as I have no reservations with respect to the bar to any action for an injunction under German law on unfair competition, it may not be possible to explore the feasibility of an action for breach of contract, in the light of certain judgments of the Court of Justice to the effect that:
– in order to ascertain whether an action is a ‘matter relating to a contract’ rather than ‘a matter relating to tort [or] delict’ within the meaning of Article 5(1) and (3) of the ‘Brussels I Regulation’, (20) it must be investigated whether the conduct complained of constitutes an infringement of contractual obligations as determined by reference to the purpose of the contract; (21) and
– in order to settle an action for compensation for non-contractual liability on the part of the EU institutions, it must be verified whether there exists between the parties, even if the contractual relationship has come to an end, a genuine contractual context, linked to the subject matter of the dispute, the in-depth examination of which proves to be indispensable for the resolution of the said action. (22)
29. The legal context of this case is clearly different from that in the judgments which I have just cited in footnotes 21 and 22. The methodological approach taken in those judgments may nonetheless be useful, by analogy, here too. Although the order for reference had appeared to indicate otherwise, the parties to the dispute confirmed at the hearing that the right to use the logo (23) had been authorised as part of the contractual relationship. If, as the documents before the Court indicate, Dr Liebe carried on using that quality label, it would have been infringing the (possibly explicit) contractual obligation to stop affixing that emblem to the packaging of its toothpaste once the relationship arising from that contract had ceased to exist.
30. The referring court could therefore, if it sees fit, take the foregoing approach as the basis for a possible action for breach of contract in favour of Öko-Test Verlag. However, I wish only to note this as a possibility here, conscious as I am that, in the context of a request for a preliminary ruling such as this, it falls to the Court to answer the questions raised, rather than to suggest alternative solutions which, ultimately, are a matter of national law.
B. First question: use such as to infringe rights
1. Summary of the parties’ observations
31. Öko-Test Verlag submits that its quality mark is used as a trade mark not for toothpaste but for a service (which it itself provides), and proposes that this question be answered in the affirmative. It argues that a quality label is not the same as a quality seal, since the former provides information on how a product performs against certain pre-established standards, while a quality seal serves only to make the quality of a product recognisable at first sight to the consumer. It concurs with the referring court and the German Government in ruling out any similarity with guarantee and certification marks. (24)
32. Öko-Test Verlag takes the view that the public concerned will perceive the use of ÖKO-TEST on the toothpaste at issue as having been authorised by its proprietor and as indicating: (a) that that product received a ‘very good’ rating in the tests to which Öko-Test Verlag subjected it; and (b) that that rating is consistent with the content of its publication and its neutral, objective and expert standards. Consequently, Dr Liebe’s use of ÖKO-TEST affects not only the trade mark’s function as an indication of origin but also other functions recognised by the Court of Justice. (25)
33. The German Government states that the first question asks not about the double identity referred to in Article 5(1)(a) of Directive 2008/95 but about the likelihood of confusion mentioned in subparagraph (b) of that article, since there are certain differences between the original ÖKO-TEST sign and the one used on the toothpaste (in particular, the test results and the publication reference). It suggests that this question be answered in the affirmative, on the basis that a trade mark registered for a service can be used for a product where the public recognises the autonomy of the service and that the latter is linked to the product.
34. The German Government considers that the decisive criterion is the perception of the public, which is used to organisations with no links to manufacturers carrying out analyses of everyday goods and then reporting the results to consumers immediately afterwards. Consumers could readily deduce that Öko-Test Verlag had tested the toothpaste and given it a ‘very good’ rating. What is more, it is common for undertakings to exhibit on those goods various marks or signs including quality or certification seals (organic farming, EU energy efficiency, fair trade), and to affix a supplier’s trade marks to them as an indication of the quality of the components of the end product (for example, Intel Inside in the case of computer processors).
35. The Commission takes the view, on the other hand, that the question actually relates to subparagraph (a), rather than (b), of both Article 9(1) of Regulation No 207/2009 and Article 5(1) of Directive 2008/95. It accepts that the affixing of the ÖKO-TEST trade mark to the toothpaste’s packaging necessarily refers to the services provided by the trade mark proprietor (Öko-Test Verlag), but considers that reference to be inherent in the advertising of the dental product and does not imply that Dr Liebe is advertising the same services as those offered by Öko-Test Verlag.
36. The Commission highlights the impact in terms of advertising which the toothpaste manufacturer is looking to obtain from using the ÖKO-TEST quality label: that the public will remember the service provided by the quality label proprietor as being the only possible source of an independent analysis. The clauses of the licensing agreement, it submits, are intended to ensure that any loss of quality on the part of the product tested does not adversely affect Öko-Test Verlag’s own trade mark, which it would if the product’s diminished quality were associated with the undertaking responsible for its testing.
2. Assessment
37. By the first question, the referring court wishes to ascertain, in essence, whether the ÖKO-TEST quality label, which is protected as a registered trade mark, serves, in the manner in which Dr Liebe uses it on toothpaste packaging, to identify the services provided by the proprietor of that mark and not only the goods sold by Dr Liebe.
38. The Court of Justice held in the judgment in Gözze that ‘there is no use in accordance with the essential function of the individual mark where it is affixed on goods for the sole purpose of being a label of quality for those goods and not that of guaranteeing, in addition, that the goods come from a single undertaking under the control of which they are manufactured and which is responsible for their quality’. (26)
39. If that ruling were followed to the letter, the solution to the present dispute would be relatively simple, inasmuch as Öko-Test Verlag does not manufacture toothpaste and its trade mark is not affixed to the packaging in order to identify the product’s origin. It would therefore have to be found that that undertaking cannot prohibit Dr Liebe from using the ÖKO-TEST trade mark in the course of trade under Article 9(2)(a) and (b) of Regulation 2017/1001.
40. Although, in the present case, such an approach could (as I shall later propose) be corrected by recourse to subparagraph (c) of the same provision, given the reputation which ÖKO-TEST enjoys on the German market, I am nonetheless of the view that proprietors of signs not having a reputation should have access to some form of legal instrument under trade mark law to enable them to take action against the use of their sign by third parties without their consent in circumstances such those at issue here. (27) An investigation of the differences between a quality seal and a quality label might come up with a more detailed answer than that offered by the judgment in Gözze.
41. As regards whether the situation at issue here is properly caught by the scenario provided for in subparagraph (a) or (b) of Article 9(2) of Regulation 2017/1001, there has been some inconsistency in the parties’ interpretation of the first question. A better approach is to set out the criteria for determining whether the conditions of application common to both scenarios are met (28) in order then to determine which one is applicable.
(a) Basis of adjudication
(1) Starting point
42. In principle, the proprietor of a registered trade mark may prohibit the use of a sign by a third party, pursuant to Article 9(2)(a) and (b) of Regulation 2017/1001, only where the following conditions are fulfilled:
– First, the sign must be identical with (29) or similar to the proprietor’s registered trade mark;
– Secondly, use of the registered trade mark: (a) must occur in the course of trade; (b) must be without the consent of the trade mark proprietor; (c) must be in connection with goods or services identical with or similar to those for which the trade mark was registered; and (d) must adversely affect or be capable of adversely affecting one of the functions performed by the trade mark. (30)
43. It follows from the documents sent by the referring court that the (first) condition, relating to the identity of the sign, (31) should not pose any problems, given that Dr Liebe does not deny having used the ÖKO-TEST quality label on its toothpaste packaging.
44. In this regard, I am unconvinced by the German Government’s view on the differences between the registered trade mark version of ÖKO-TEST and the emblem that features on Dr Liebe’s toothpaste packaging. The fact that, as it appears on that packaging, the trade mark includes within it the test results and a publication reference, is irrelevant, for two reasons: the first is that the public is used to seeing the ÖKO-TEST trade mark with those details (without them, there would be little if any value in its being featured on the product’s advertising); and the second, which follows from the first, is that those differences would go unnoticed by the average consumer, inasmuch as they would not make him think that this is a different trade mark (although, as a point of fact, this is a matter for the referring court to examine). (32)
45. Neither is there any dispute as to the fulfilment of the conditions with respect to use in the course of trade and lack of consent on the part of the trade mark proprietor. The latter does not have to be a competitor of the product manufacturer: since Article 9(2) of Regulation 2017/1001 allows the proprietor of the trade mark to prohibit its use by ‘all third parties’ using it without the proprietor’s consent, status as a competitor is not essential. The fact that subparagraphs (a) and (b) of that provision apply primarily to competitors does not mean that the legislature confined to them alone the right of action enjoyed by the trade mark proprietor.
46. It therefore remains to be determined whether there was any ‘coincidence’ between the goods and services and, once that question has been answered, whether the use of the ÖKO-TEST trade mark by Dr Liebe was sufficient to adversely affect one of the characteristic functions of that trade mark.
(2) Nature of the trade mark
47. The ÖKO-TEST quality label is a mark registered for services. Signs of this kind are different from those that designate goods on account of their non-material nature, which deprives them of a tangible foundation, unlike goods protected by trade marks. (33)
48. The non-material nature of services allows them to interact with goods. Where the properties of a product are affected by services, one may find service marks along with the trade marks for the goods so affected. This is true of the extended use of the seals and quality labels to which the German Government refers.
49. Trade marks for goods that feature labels (such as quality labels) will usually be found in contracts including a licence for use. These authorise the manufacturer, as licensee, to use the label on its products, thus enhancing their reputation. The quality label is used precisely in order to communicate to the public that such products, after having undergone the relevant tests, have been favourably rated by the quality label proprietor (in this case, Öko-Test Verlag).
50. Where the label is registered as a trade mark, the agreement will allow the licensee to affix it, as a trade mark, to its own products. That same agreement, however, also enables the trade mark proprietor to make its own services known to the public, in a symbiosis favourable both to itself and to the various licensees. What is created, as I shall explain further when describing the characteristics of the quality label, is a form of ‘dual use’ agreement. (34)
51. In this way, Dr Liebe can, if duly authorised, imprint the quality label as a trade mark on its own products; at the same time, however, the use of the ÖKO-TEST label on those products leads to a wider dissemination of the services which Öko-Test Verlag offers to undertakings and consumers.
(3) Characteristics of the services provided by Öko-Test Verlag
52. Regulation 2017/1001 and Directive 2015/2436 make provision for collective marks (35) and certification marks: (36)
– Collective marks serve to differentiate goods or services of the members of the association which is the proprietor of the mark from those of other undertakings.
– Certification or guarantee marks fulfil their function as indications or origin where they distinguish ‘goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics […] from goods and services which are not so certified’. (37)
53. The quality label, although it bears certain similarities to certification marks, is not the same as these and is not provided for in any of the legislative texts cited. Generally speaking, the quality label can be registered as an individual mark by any undertaking whose business is the objective and independent evaluation of goods and which offers a broad range of economic operators the opportunity, in the form of a licensing agreement, to demonstrate the quality of their goods by using the logo of the undertaking concerned.
54. Those differences explain why it is difficult to require proprietors of quality labels to draw up regulations within the meaning of Article 75 of Regulation 2017/1001, since, for one thing, they are not members of an association that have a duty to comply with those regulations, as is the case with collective certification marks, and, for another, the undertaking that is the proprietor of the mark may vary at will the products subject to testing and the parameters of those tests.
55. The referring court points out the differences between quality labels and quality seals (such as that which was analysed in the judgment in Gözze), which are, in essence, that, in the case of quality labels: (a) the tests are extended to a broad range of goods and services and are not confined to just one; (b) the criteria are tailored to the needs of the consumer and the tests are regularly modified; (c) the organisation offering testing services is not under the influence of the producer; and (d) rather than authorisation to use the label being dependent on compliance with certain requirements, a rating is awarded on the basis of the test results. (38)
56. An undertaking whose products have been tested in this way is entitled, after concluding a licensing agreement for the use of the mark, to mention this fact in the description or packaging of its products. In the present case, if Dr Liebe secured the consent of Öko-Test Verlag, it could legitimately place the ÖKO-TEST sign in a visible location on its toothpaste, together with the rating obtained and a reference to the number of the magazine in which the results were published. It seems only logical, as the Commission submits, that an undertaking whose products are tested by Öko-Test Verlag and which obtains a satisfactory result will have an interest in putting that label on its products as a means of advertising the virtues of its goods.
57. In printing the ÖKO-TEST label in a visible format on the packaging of Aminomed, Dr Liebe seeks first and foremost to reinforce the message that this is a quality toothpaste through the reputation and reliability which the ÖKO-TEST trade mark bestows upon it, these being borne out by the rating (‘very good’) achieved and the reference to the magazine in which the test results were published. (39) At the same time, however, that same practice helps to communicate to consumers the reliability of the services provided by Öko-Test Verlag, which is to say that it helps to identify the business from which the activity of analysing and evaluating consumer goods originates.
58. Consequently, it cannot be submitted, as Dr Liebe did at the hearing, that the ÖKO-TEST sign was used descriptively, within the meaning of recital 21 of Regulation 2017/1001, in the manner of further information about the product. I do not share that view, inasmuch as:
– The way in which that sign was employed demonstrates the intention to use the trade mark to identify the services provided by Öko-Test Verlag. If the intention had simply been to furnish information about the rating, this could have been conveyed without the need for the logo.
– The aforementioned recital permits descriptive uses provided that they are fair and honest, qualities which are difficult to discern where the consent that was originally obtained no longer exists.
59. In short, given the close relationship between the services provided by the undertaking awarding the quality label (ÖKO-TEST) and the products that carry it (Aminomed), the use of that label after it has been registered as an individual trade mark has two important effects from the point of view of Article 9(2)(a) and (b) of Regulation 2017/1001: first, the label reinforces the indication as to the quality of the products that are authorised to use it, and it can therefore be said to be used for those products; (40) secondly, it also serves to advertise the services of the undertaking that awards it. It is, in short, a manifestation of the dual use to which I referred previously.
(4) Perception of the consumer
60. The view of the average consumer and the way in which he or she perceives the trade mark are matters of fact which fall to be determined by the national court. (41) The Court of Justice may nonetheless provide the national court with answers that will be useful to it in connection with the judgment it must give. (42)
61. Öko-Test Verlag, the German Government and the Commission (the latter with some qualifications) all agree that the public concerned will view the use of the ÖKO-TEST trade mark on the packaging of the toothpaste at issue as a reference to the independent services of the undertaking that is the proprietor of that trade mark (Öko-Test Verlag). The average consumer will therefore associate that sign at least with the services of ‘consumer information and consultancy with regard to the selection of goods and services using test and investigation results’ (class 35) and the services of ‘conduct and assessment of science-based product testing and service reviews’ (class 42).
62. It is common for the packaging of many consumer goods to carry quality labels and seals (or other forms of certification or indication of environmentally-friendly origin or fair trade). It follows that, in a situation such as that at issue, the average consumer will readily understand that the ÖKO-TEST trade mark as used by Dr Liebe refers to the services provided by Öko-Test Verlag, with which he or she will associate the quality label. The way in which Dr Liebe utilises that mark thus constitutes ‘use as a trade mark’, (43) inasmuch as it operates to guarantee that the service of analysing the quality of the toothpaste was carried out by the undertaking that is the proprietor of the trade mark, that is to say Öko-Test Verlag.
(5) Adverse effect on the functions of the trade mark
63. According to the settled case-law of the Court of Justice, the exclusive right of the proprietor of the trade mark enables him to protect his specific interests, that is, to ensure that the trade mark can fulfil its function. The exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, a mere threat of such harm being sufficient for these purposes. (44)
64. Amongst those functions is not only the (essential) function of identifying the origin of the product or service but also that of guaranteeing its quality, as well as those of communication, investment or advertising. (45)
65. As regards the essential function, the trade mark serves in particular to ‘guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality’. (46)
66. Now, according to the statement of facts contained in the order for reference, Dr Liebe used the trade mark without the consent of Öko-Test Verlag and the rating it used, although corresponding to the evaluation it obtained in 2005, could not have borne any relation to the 2008 analyses, since its toothpaste was not included in these. In those circumstances, the average consumer might think that Öko-Test Verlag was still endorsing the quality of the toothpaste product as meeting the previous standard certified by the quality label, when, in truth, that toothpaste no longer had that endorsement because it had not been subjected to the new tests.
67. On that premiss, the use which Dr Liebe made of the ÖKO-TEST trade mark was potentially misleading, since it gave the impression that the ‘very good’ rating had been obtained following tests carried out under the control of Öko-Test Verlag. The essential function of the trade mark (47) was thus distorted, since, although Öko-Test Verlag conducted the original tests, the rating that features on the toothpaste’s packaging does not correspond either to the most recent toothpaste analyses carried out by Öko-Test Verlag, which the latter published in its magazine, or to the licences awarded after those new analyses. (48)
68. What is more, the differences between the result publicised by Dr Liebe via the ÖKO-TEST sign and the true account of the analyses as I have just set it out could tarnish the prestige achieved by Öko-Test Verlag through its trade mark, thus adversely affecting the function of investment (defined as being the possibility for the proprietor of a mark to employ it in order to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty). (49)
(b) Conclusion
69. As I have already made clear, I was minded not to opt at the outset for the inapplicability of either subparagraph (a) or (b) of Article 9(2) of Regulation 2017/1001. However, in the interests of providing the referring court with a useful answer, I would say that the explanations I have set out up to now lead me to the following conclusions:
– Dr Liebe made dual use of a trade mark coincidental with the original (ÖKO-TEST), in order both to make its toothpaste more attractive by featuring the quality label (displaying the ‘very good’ rating), and to designate the services offered by Öko-Test Verlag. Inasmuch as there is therefore an identity of signs and services, the ‘double identity’ condition laid down in Article 9(2)(a) of Regulation 2017/1001 is fulfilled.
– In so far as the average consumer will not believe that the ÖKO-TEST trade mark indicates that the analysis of the Aminomed toothpaste was carried out by Dr Liebe and, given that that trade mark is well known to the German public, will not believe either that the toothpaste comes from the same undertaking or from economically linked undertakings, any likelihood of confusion within the meaning of Article 9(2) of Regulation 2017/1001 is ruled out.
70. Given, moreover, the risk that Dr Liebe’s use of the ÖKO-TEST trade mark will adversely affect, at the very least, the functions of indication of origin and investment performed by that mark, the conditions of application laid down in Article 9(2)(a) of Regulation 2017/1001 are met and that use can therefore be classified as being such as to infringe rights.
71. It should be taken into account, finally, that, since the list of the forms of use which the proprietor of a trade mark can prohibit, set out in Article 9(3) of Regulation 2017/1001, (50) is not exhaustive, Dr Liebe’s use of the trade mark at issue may be included therein, on the basis described above.
C. Second question: use of a trade mark with a reputation in a manner such as to infringe rights
72. As I have suggested an answer in the affirmative to the first question and the referring court raises the second question only in the event that the answer to the first is in the negative, there is no essential need to proceed any further. I shall, nonetheless, address the second question in the alternative, in the event that the Court of Justice answers the first question differently or takes the view that my proposed finding as to the double identity of signs, on the one hand, and of services and products, on the other, is excessively artificial.
1. Summary of the parties’ observations
73. Öko-Test Verlag recalls that the special protection conferred on trade marks with a reputation goes beyond the scope of the identity or similarity of goods and is predicated on the impairment and improper exploitation of such marks. There is, it submits, no doubt that the ÖKO-TEST trade mark has a reputation and the public associates that mark with the sign which Dr Liebe affixes to its products.
74. In the view of Öko-Test Verlag, and the Commission, the ÖKO-TEST trade mark is used in such a way as to infringe rights where the person using it is not authorised to do so, and to the extent that its use adversely affects the functions of that trade mark. Furthermore, there is a risk that the public will lose confidence in its services if the product disappoints expectations. Consumers might project their frustration on to Öko-Test Verlag’s work, as manifested in its tests and publications.
75. Given its answer in the affirmative to the first question, the German Government has not commented on the second, as this is raised in the alternative.
76. The Commission takes the view that the conditions of application laid down in Article 9(2)(c) of Regulation No 207/2009 and Article 5(2) of Directive 2008/95 are fulfilled where the individual trade mark enjoys a reputation as a quality label. Use in such a way as to infringe rights for the purposes of those provisions includes the affixing of that trade mark to its own products by a third party.
77. The Commission recalls that the trade mark at issue must be known to a significant proportion of the German public concerned by the goods or services protected by it. (51) It considers that the way in which the ÖKO-TEST sign is used may lend it prestige as a trade mark. Through the licensing agreement, Öko-Test Verlag ensures that its trade mark enters the public consciousness as a reference to its consumer information and consultancy services.
2. Assessment
78. The referring court wishes to ascertain whether, in the absence of any protection that might have been afforded to the ÖKO-TEST trade mark on the basis of Article 9(2)(a) of Regulation 2017/1001, reliance might be placed on the protection of trade marks with a reputation that is available under subparagraph (c) of that same article.
79. The obstacle that appears to be standing in the way of the referring court is that the ÖKO-TEST individual trade mark is known only as a quality label and is used as such by the third party. I do not believe this to be relevant, however.
– So far as concerns any attempt to suggest that there was no ‘use as a trade mark’ within the meaning of the judgment in Gözze, I would refer, for the purposes of refuting that proposition, to my foregoing submissions. (52)
– So far as concerns any attempt, on the other hand, to differentiate between the public’s knowledge of the trade mark, on the one hand, and the ‘quality label’, on the other, this, in my opinion, is an artificial difference. ÖKO-TEST was registered as an individual trade mark at national and EU level and must therefore enjoy the protection afforded to this type of mark, whether or not the public is unaware of this fact and whether or not a third party is seeking to use the trade mark only as a quality label. Any other approach would deprive trade marks of their legitimate protection, which would come to depend on the extent to which the public is aware of their registration.
80. What the second question is essentially asking, therefore, is whether the proprietor of the ÖKO-TEST quality label can avail itself of the protection available to trade marks with a reputation in order to take action against the use of that label by a third party in such a way as to infringe rights. It will, of course, have to be found that that trade mark enjoys the reputation required, given the extent to which that label is known to German consumers. This is an assessment which falls to the referring court alone. (53)
81. Article 9(2)(c) of Regulation 2017/1001 establishes, for the benefit of trade marks with a reputation a wider form of protection than that laid down in Article 9(2)(a) and (b). The — cumulative (54) — conditions of benefiting from that protection are: (a) that a sign is being used which is identical with or similar to a registered mark; (b) that that use is being made without due cause; (c) that the sign is being used for goods or services, whether identical, similar or not similar; (55) and (d) that use of that sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark. (56)
82. There is no dispute as regards conditions (a), (b) and (c): use of the quality label by Dr Liebe was made without the consent of Öko-Test Verlag, and therefore without due cause, and in connection with goods or services in respect of which there is no need to establish identity or similarity.
83. Consequently, it is necessary to ascertain only whether, in using the ÖKO-TEST trade mark, Dr Liebe performed any (57) of the actions described in Article 9(2)(c) of Regulation 2017/1001. These may consist either in impairing the distinctive character of that mark, damaging the repute of that mark or taking unfair advantage of the distinctive character or the repute of that mark.
84. In my opinion, for the reasons I have given in points 66 to 68 of this Opinion, the use which Dr Liebe made of the ÖKO-TEST trade mark may tarnish the prestige of that mark by creating in the mind of the consumer confusion such as to reduce the trade mark’s power of attraction. (58)
85. Furthermore, Dr Liebe would derive an advantage from using the ÖKO-TEST trade mark without due cause, inasmuch as the favourable connotations projected by that trade mark in terms of advertising and quality, as mentioned above, would be transferred to its toothpaste, which was not subjected to the new tests. This would amount to an unfair exploitation of the trade mark’s reputation within the meaning of the case-law of the Court of Justice. (59)
86. In any event, it is for the referring court to assess whether the facts of the dispute in the main proceedings are characterised by the sign’s being used, without due cause, in order to take unfair advantage of the distinctive character or the repute of the ÖKO-TEST trade mark. (60)
V. Conclusion
87. In the light of the foregoing, I propose that the Court’s answers to the questions referred for a preliminary ruling by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) should be as follows:
(1) Article 9(2)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, and point (a) of the second sentence of Article 5(1) of Directive 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, authorise the proprietor of an individual trade mark made up of a ‘quality label’ and registered for ‘consumer information and consultancy with regard to the selection of goods and services, in particular using test and investigation results and by means of quality judgments’ to oppose uses of his trade mark which he has not authorised where:
– a third party affixes the trade mark to a product for which it is not registered;
– the public perceives the trade mark as a ‘quality label’, in the sense that the product has been manufactured and marketed by a third party and not by the proprietor of the trade mark, but the latter has subjected it to certain tests, evaluated it and awarded it a rating which is marked on the quality label; and
– the use adversely affects one of the functions of the trade mark.
(2) The use by a third party of an individual trade mark exhibiting the features described, without the proprietor’s consent, constitutes a use such as to infringe rights for the purposes of Article 9(2)(c) of Regulation 2017/1001 and Article 5(2) of Directive 2008/95 where:
– the trade mark has a reputation, even if only as a ‘quality label’; and
– the prestige of the trade mark is tarnished and the third party obtains an unfair advantage from using the sign, a matter which falls to be determined by the referring court.