11 April 2019Trademarks

CJEU rules on German magazine TM suit

The Court of Justice of the European Union (CJEU) has weighed in on a trademark dispute between a German consumer magazine and a toothpaste manufacturer.

The case relates to toothpaste company Dr. Liebe’s use of product reviews, or “test labels”, published by German consumer magazine ÖKO-Test.

ÖKO-Test tests and reviews products in its regular magazine. The publication licenses the right to place test labels bearing the results of the test on the product’s packaging. The company says that this license is valid until it publishes another review of the product.

In the judgment, issued today, April 11, the CJEU’s Fifth Chamber responded to a referral from the Dusseldorf Higher Regional Court, which sought clarity on ÖKO-Test’s rights to oppose use of its mark for different goods and services than which it was registered.

In 2005, the magazine gave a particular Dr. Liebe toothpaste a “very good” rating, which the company then reproduced on its packaging for the product.

ÖKO-Test sued Dr. Liebe for trademark infringement in German court in 2014, claiming that the license agreement permitting the use of its label for marketing purposes had expired in 2008 after the magazine published a new test for toothpaste products with different parameters.

The toothpaste company held that the license agreement remained in place. The Dusseldorf regional court found that Dr. Liebe used the ‘ÖKO-Test’ mark in relation to goods and services different to those covered by the mark.

The German court stayed the case and requested clarity from the CJEU on two questions. Firstly, it asked whether ÖKO-Test was entitled to oppose the use of its mark in relation to goods and services for which it is not protected.

Furthermore, the German court sought clarity on whether ÖKO-Test was authorised to oppose the use of the mark when “the individual mark enjoys a reputation only as a test label” and a third party derives an undue advantage from this reputation.

In response, the CJEU said that there “does not appear to be any indication that by affixing this sign Dr. Liebe seeks to present itself to the public as a specialist in the field of product testing”.

In answer to the first question posed by the German court, the CJEU said that the proprietor of an individual test label mark was not authorised to oppose the use of that mark on goods which are different to those for which the mark was registered.

The CJEU, however, ruled that the owner of a well-known mark was entitled to oppose the use of the mark by a third party, regardless of the goods and services for which it is used, if it derives an undue advantage from the mark’s reputation.

The Fifth Chamber said it would be for the German court to determine whether Dr. Liebe has enjoyed such an advantage from the use of the ‘ÖKO-Test’ label and remanded the case for further proceedings.

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