Lecture 4 - Trademark Law II
In this case, the court said this image revokes a crocodile and Lacoste’s trademark is displayed by a
crocodile which is protected, therefore infringement.
Exclusive right to use it, so Lacoste has the exclusive right to put the crocodile on its shirts and other
products. It also extends to the use of identical and similar trademarks. Exclusive rights are obtained
only through registration, which it makes it an unfair right since all you have to do is file a
registration.
All Donald Trump had to do was registering a trademark that he will not use until 2012 and he has
already claimed it for himself. He didn’t have to design anything or come up with some creative
thought. Trademarks are like crocodiles, because if you start a new business, you always have to
check whether someone else has a trademark that may be in the way of your new product or name.
If you are in the starting stage of your new business, you invested in products and it turns out that
someone else has a trademark on this or something similar, you’re screwed. You need to start using
it within five years. In these five years, all you have to do is register.
1. Used in the course of trade
If you make purely non-commercial use with a Ferrari trademark, then most likely there is no
infringement. If you use it for advertising purposes, it’s most likely infringement. This is using in the
course of trade: it means that you’re distinguishing your own goods or services using this sign. In this
regard, the main question is whether the public interprets the use of the sign as such. Putting the van
in front of your store is still something used to draw people into your store, so then it’s infringement.
If the Red Bull sign is outside your store, someone asks for it and you give Monster energy instead:
they’re using the goodwill of the red bull sign in order to sell monster energy drink. They’re
advertising by giving you a product that’s not it, giving you something different (implicitly
advertising). Empty cans of Red Bull, going to a factory of other energy drink, asking can you clean
out the cans and fill them with the other energy drink. The third party is supplying signs with Red Bull
on them already. The person asking for it puts it back on the market, so he is infringing. If the third
party is not making money out of it could be a criterium as well. The CJEU in Red Bull/Winters case
said that the refilling is not affixing the mark on the can, he’s just sitting on a factory getting cans that
already have red bull on them. They’re merely filling them up and giving them back and therefore
they’re not using the mark. It’s not used in the course of trade. If you affix the sign yourself, you
know that they’re goods that are not distinguished by that trademark, so this is infringement.
2. Trademark infringement
If we are in the course of trade, we look at whether the trademark was infringed by the sign used.
Trademark law is about two things:
I. The sign as compared to the trademark and;
II. A comparison of the goods (for which the trademark on the one hand is registered and for
which the infringing sign is used on the other hand)
Use of identical sign of identical goods. Use identical/similar or identical/similar goods: here, you
need to prove likelihood of confusion. If the average consumer walks into the store, do they think
this is the proprietor’s product? Use identical/similar signs for identical/similar/dissimilar goods:
Here, there is an extension of your trademark only if your reputation is being damaged in some way
by the use that the third party is making. Identical or similar signs but for uses that are not for
distinguishing goods. For instance, a trade name (technically distinguishing your company from
In this case, the court said this image revokes a crocodile and Lacoste’s trademark is displayed by a
crocodile which is protected, therefore infringement.
Exclusive right to use it, so Lacoste has the exclusive right to put the crocodile on its shirts and other
products. It also extends to the use of identical and similar trademarks. Exclusive rights are obtained
only through registration, which it makes it an unfair right since all you have to do is file a
registration.
All Donald Trump had to do was registering a trademark that he will not use until 2012 and he has
already claimed it for himself. He didn’t have to design anything or come up with some creative
thought. Trademarks are like crocodiles, because if you start a new business, you always have to
check whether someone else has a trademark that may be in the way of your new product or name.
If you are in the starting stage of your new business, you invested in products and it turns out that
someone else has a trademark on this or something similar, you’re screwed. You need to start using
it within five years. In these five years, all you have to do is register.
1. Used in the course of trade
If you make purely non-commercial use with a Ferrari trademark, then most likely there is no
infringement. If you use it for advertising purposes, it’s most likely infringement. This is using in the
course of trade: it means that you’re distinguishing your own goods or services using this sign. In this
regard, the main question is whether the public interprets the use of the sign as such. Putting the van
in front of your store is still something used to draw people into your store, so then it’s infringement.
If the Red Bull sign is outside your store, someone asks for it and you give Monster energy instead:
they’re using the goodwill of the red bull sign in order to sell monster energy drink. They’re
advertising by giving you a product that’s not it, giving you something different (implicitly
advertising). Empty cans of Red Bull, going to a factory of other energy drink, asking can you clean
out the cans and fill them with the other energy drink. The third party is supplying signs with Red Bull
on them already. The person asking for it puts it back on the market, so he is infringing. If the third
party is not making money out of it could be a criterium as well. The CJEU in Red Bull/Winters case
said that the refilling is not affixing the mark on the can, he’s just sitting on a factory getting cans that
already have red bull on them. They’re merely filling them up and giving them back and therefore
they’re not using the mark. It’s not used in the course of trade. If you affix the sign yourself, you
know that they’re goods that are not distinguished by that trademark, so this is infringement.
2. Trademark infringement
If we are in the course of trade, we look at whether the trademark was infringed by the sign used.
Trademark law is about two things:
I. The sign as compared to the trademark and;
II. A comparison of the goods (for which the trademark on the one hand is registered and for
which the infringing sign is used on the other hand)
Use of identical sign of identical goods. Use identical/similar or identical/similar goods: here, you
need to prove likelihood of confusion. If the average consumer walks into the store, do they think
this is the proprietor’s product? Use identical/similar signs for identical/similar/dissimilar goods:
Here, there is an extension of your trademark only if your reputation is being damaged in some way
by the use that the third party is making. Identical or similar signs but for uses that are not for
distinguishing goods. For instance, a trade name (technically distinguishing your company from
