Here - Bird & Bird

554 European Intellectual Property Review
Here Come The Boys and its forthcoming tour either were
the Chippendales, or were somehow connected in the
course of trade with, the Chippendales or the
Chippendales’ business. For example references appeared
in the press and other media such as “The Chippendales
are back” or describing the Here Come the Boys dance
group as being “re-united” and “re-branded”.
The Chippendales alleged infringement under
art.9(1)(a), 9(1)(b) and 9(1)(c). In relation to art.9(1)(c),
before launching its business, Superstar had no reputation
or goodwill in relation to men’s dance shows. The
Chippendales alleged that, had Superstar launched its
business without using the CHIPPENDALES name, it
would have had to spend a great deal more time, effort
and money on promoting and advertising its business to
bring it to the attention of its target customers and for
example to secure bookings at theatre venues. By relying
on the Chippendales’ reputation and goodwill in the
Chippendales’ business, it was alleged that Superstar had
attracted the Chippendales’ customers and potential
customers to itself, thereby taking unfair advantage of
the reputation and distinctiveness of the
CHIPPENDALES trade mark.
An interesting aspect of this case is that it is possible
that not all the customers and potential customers of the
group Here Come the Boys were necessarily confused in
that they may have been (or become) aware that the group,
although containing former Chippendales, was not, and
was not connected to, the presently performing
Chippendales. However, the motivation of the audience
to attend the performance by Here Come The Boys would
in most if not all cases have been primarily because of
the link with the iconic brand the Chippendales who
alleged that Superstar intended to use the Chippendales
name to take advantage of the famous brand name. In
line with the Whirlpool and Specsavers cases, such
intention would make the advantage unfair.
Like the L’Oréal case itself this case also raises
questions of legitimate descriptive use in the light of the
former Chippendales performers, although, following the
CJEU’s reasoning, the use of the mark was as in L’Oréal
not for purely descriptive purposes, but use which might
affect the communication, investment and advertising
functions of the mark.
How should European trade mark law
develop?
In the United Kingdom art.5(2)/9(1)(c) was originally
implemented into law in such a way as to preclude
protection under that heading for identical or similar
goods. Thus the three categories of infringement
corresponding to art.9(1)(a), 9(1)(b) and 9(1)(c) did not
involve an overlap. Article 9(1)(a) dealt with cases of
“double identity” (identical signs and identical goods/
services). In such a case infringement may be established
15 Adidas Salomon v Fitnessworld (C-408/01) [2003] E.C.R. I-12537; [2004] 1 C.M.L.R. 14.
16 Davidoff & Cie v Gofkid Ltd (C-292/00) [2003] E.C.R. I-389; [2003] E.T.M.R. 42.
17 Baywatch Productions Co Inc v The Home Video Channel [1997] F.S.R. 22 Ch D.
without the need to show confusion or a likelihood of
confusion (although such confusion will be the inevitable
result in most cases where use has occurred). Article
9(1)(b) dealt with identical or similar signs and
identical/similar goods/services. In such cases
infringement required a showing of a likelihood of
confusion or association. Article 9(1)(c) dealt with
identical/similar signs and dissimilar goods/services, and
required a trade mark with a reputation in the Community,
use without due cause and the taking unfair advantage
of, or detriment to the distinctive character or repute of
the CTM. As discussed below it was confirmed by the
CJEU that a likelihood of confusion or association is not
required under the third category of infringement.
Following the Opinion of the Advocate General in
Adidas Salomon v Fitnessworld (C-408/01), 15 followed
by the ECJ in that case and in Davidoff II, 16 it was held
that art.5(2)/9(1)(c) could and should equally apply to
identical or similar goods/services, disregarding the literal
words of that article. In part this was in response to the
curtailment of art.5(2) by national courts (such as the
English High Court in Baywatch Productions Co Inc v
The Home Video Channel 17 which had held that this form
of infringement also required confusion), on the reasoning
that it would be illogical for non-similar goods to be
accorded greater protection than similar goods by
dispensing with the ingredient of the likelihood of
confusion. The ECJ held that the protection accorded by
art.5(2) to marks with a reputation was not conditional
on a finding that there existed a likelihood of confusion.
As a result the United Kingdom also amended its law to
delete the reference to non-similar goods, thus extending
the protection of art.5(2)/9(1)(c) to identical and similar
goods/ services. The Max Planck Study has recommended
at para.2.197 that art.9(1)(c) should likewise be changed
to express the principle that protection is granted
irrespective of whether the sign is used for identical,
similar or dissimilar goods.
With hindsight, the extension of art.9(1)(c) to identical
and similar goods/services can be seen as the reason for
the current unease about the unclear extent of protection
accorded by it. The original framework involved
non-overlapping categories: art.9(1)(b) was to apply to
similar goods/services where there exists a likelihood of
confusion, and art.9(1)(c) was intended to apply to
non-similar goods/services where there is a trade mark
with a reputation and unfair advantage or detriment to
distinctive character or repute (but with no need to show
confusion). In other words if the goods/services were
identical or similar it should be possible for the trade mark
owner to establish confusion and there would be no need
for the type of extended protection accorded under
art.9(1)(c). If the trade mark owner cannot establish such
confusion in the case of identical or similar
goods/services (such that the essential function of the
trade mark as a guarantee of origin is not liable to be
[2011] E.I.P.R., Issue 9 © 2011 Thomson Reuters (Professional) UK Limited and Contributors