Can a ‘GERRI’ registered trademark in Germany be used to stop Irish mineral water being correctly described as ‘Kerry Spring’?
Topic: Brands
Who: Gerolsteiner Brunnen GmbH & Co. v Putsch GmbH
Where: The European Court of Justice
When: January 2004
What happened:
Gerolsteiner Brunnen ("GB") of Germany sued Putsch for trade mark infringement over use by Putsch of the name "Kerry Spring" for mineral water. All relevant activity was in Germany, although the water used to make the Putsch product came from Ireland's County Kerry.
The basis of the GB claim was its registration in Germany of the trademark "Gerri." This had been on the files since 1985 and was in respect of mineral water as well as for various other non-alcoholic drinks.
On appeal in the Munich Higher Regional Court, GB's claims were dismissed, but it appealed, through Germany's Supreme Appeals Court, to the European Court of Justice in Luxembourg ("ECJ").
The ECJ noted that the expression "Kerry Spring" was expressly included in the list of mineral waters recognised by Ireland and published by the European Commission and that the term "Kerry Spring" was used here as a geographical indication of origin.
It also noted that the EU Trade Marks Directive (implemented in the UK by the 1994 Trade Marks Act) specifically states that the proprietor of a registered trade mark cannot prohibit a third party from using, in the course of trade, indications concerning the geographical origin of goods, provided the third party uses them "in accordance with honest practices in industrial or commercial matters." This provision is transposed into UK law in section 11 (2) (b) of the 1994 Act.
However, the referring German court did find that there was a likelihood of oral confusion between Gerri and Kerry, since experience showed that when ordering orally, customers shortened "Kerry Spring" to "Kerry."
Putsch's answer to this was that where geographical indications of origin were used, the test under the directive was not whether there was a likelihood of confusion, but whether the usage was in accordance with honest practices.
The ECJ agreed and felt this test had to be rigorously applied. If it were otherwise and the mere existence of the possibility of confusion by way of phonetic similarity, this could negate the protection given to geographical indications of origin.
This had to be the case, the Judges felt, particularly with the EU expanding to 25 member states in May 2004, when there had to be an even greater chance of the existence of some sort of phonetic similarity between registered trademarks and geographical indications of origin.
In the light of all these considerations, the ECJ determined that the matter should be sent back to the national court. There, it should carry out an overall assessment of the relevant circumstances to establish whether there was conduct here on the part of Putsch which could be described as "contrary to honest practices."
Features that they should look at would include the shape and labelling of the bottle in order to assess whether Putsch was responsible for making these too similar to the equivalent GB product. Such considerations should help the court establish whether Putsch could be regarded as "unfairly competing" with GB and therefore conducting itself in a way that was "contrary to honest practices in industrial or commercial matters."
Why this matters:
Ever since the introduction across the EU of levels of protection for geographical indications of origin, there has been tension between these rights and the rights afforded to the owners of registered trademarks.
The judgement in this case does nothing more than re-state the provisions of European trademark legislation. However, the point the ECJ makes about being slow to move on the basis of mere phonetic similarity, particularly with EU enlargement approaching rapidly, is a very valid one.
A related aspect here is that, as previously reported on marketinglaw, all Europe's brand owners should be now looking quickly and carefully at the position as regards the protection of their brands across the 10 new EU member states come May 2004.
