The Court of Justice of the European Union (CJEU), on January 11th 2024 decided upon the interpretation of a rule relating to the use of trademarks of third parties as part of a case pitting the Spanish company owner of the “ZARA” trademark against an information service provider who launched an advertising campaign where the trademark at issue had been used without the consent of the owner company.
The case
The provider, defendant in the infringement action brought before the Spanish court, denied the infringement of the rights conferred to the well-known clothing trademark and argued, nonetheless, to have made a mere “referential” use of the ZARA sign (included under the lawful uses of third parties’ distinctive signs) essentially to refer to one of the prices offered to the winners (a ZARA gift card).
The Spanish Supreme Court, called to decide on the dispute and to settle it, decided to suspend the proceeding and ask the CJEU how should the rule applicable to the case at issue be interpreted – that is Article 6(1)(c) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to harmonize the laws of EU Member States regarding trademarks.
In particular, it was necessary to clarify if this norm, concerning the lawful uses of third parties’ distinctive signs, should be interpreted as covering any type of use of the trademark for trade purposes by a third party to identify, in accordance with honest practices in industrial or commercial matters, goods or services as those of the proprietor of that trade mark or as covering only the use of that trademark which is necessary to indicate the intended purpose of a product marketed by that third party or of a service offered by it.
Therefore, the European Judge, in charge of the preliminary ruling, recalled – first of all – that interpreting a provision of EU law requires to consider not only its wording, but also its context and objectives pursued by the act of which it forms part.
Thus, also in light of the objectives pursued by the Directive, the Judge clarifies that art. 6 “must be interpreted as meaning that it covers use of the trade mark in the course of trade by a third party for the purpose of identifying or referring to, in accordance with honest practices in industrial or commercial matters, goods or services as those of the proprietor of that trade mark only when such use of the trade mark is necessary to indicate the intended purpose of a product marketed by that third party or of a service offered by that party”
Conclusions
Therefore, in the case under exam, in light of the interpretation provided by the European Court, it will be up to the Spanish Judge to determine if the use of the trademark by the defendant in the infringement action – with its advertising campaign launched for a paid subscription to one of its services which allowed the participation to a prize draw, in which one of the prizes was a “ZARA gift card” – was necessary to indicate the intended purpose of a service offered and, as appropriate, if that use was made in accordance with honest practices in industrial or commercial matters.
Giulia Mugnaini