Unfair Commercial Practices Directive, Chapter 2, Section 1, Article 6, 1., (b) Unfair Commercial Practices Directive, Chapter 2, Section 1, Article 6, 1., (c)

The use of packages for the trader's own products, when such packages strongly resemble the products of another company, constitutes a misleading practice when confusion can be created as to the commercial origin of the trader's products or to the fact whether the trader's products have been sponsored or approved by that other company.

Plaintiff, a Belgian company who holds the rights on the famous watches branded "Ice Watch", commercialized its watches in packages that strongly resembled the children's toys Lego, which are characterized as cubes with specific bumps on top of them which allow the Lego cubes to be fastened on each other (allowing to build constructions composed by Lego cubes). In addition, also the promotional materials of the plaintiff, such as presentation furniture, hangers, etc. were construed in the same way and resembled the children's toys.

Defendant, the right holder (including a trade mark) on the Lego toys, introduced a claim against the plaintiff, stating amongst others that by using said packages, the plaintiff infringed the rules on unfair commercial practices. In first instance, the defendant was followed by the judge who stated that the commercial practices in question were indeed misleading.

The plaintiff appealed to this decision.  

Does the use of packages for the trader's own products, when such packages strongly resemble the products of another company, constitute a misleading practice when confusion can be created as to the commercial origin of the trader's products or to the fact whether the trader's products have been sponsored or approved by that other company?

The judge first analyses whether this commercial practice constitutes an infringement on the prohibition on misleading commercial practices in that it misleads the consumer as to the commercial origin of the product (article 6, 1 (b) of the Directive 2005/29). The court holds that the systematic reproduction of the characteristic features of the Lego toys suffices to conclude that a risk exists that the consumer would be misled on the commercial origin of plaintiff's products. This was proven by studies that were produced by the defendant according to which 20% of consumers effectively think that the products of plaintiff are produced by or with consent of defendant.

The court next investigates whether the practice of the plaintiff constitutes a misleading practice in that it could mislead the consumer to believe that its product was "directly or indirectly sponsored or approved" (article 6, 1 (c) of the Directive 2005/29). The court rules that this is indeed so, referring to the result of the survey as mentioned above. In addition, the survey also indicated, so said the court, that 70% of the consumers would prefer the Ice Watch in the box resembling the Lego toys above those in a more neutral box. The court adds that the fact that plaintiff's products resemble those of the defendant, make these products more attractive towards consumers. In addition, the court states that the plaintiff cannot deny that it has used those characteristics just because of their attractive value.  

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Defendant's arguments were followed and the court decided that the plaintiff had infringed the prohibition on misleading commercial practices, giving misleading information both on the point of the commercial origin of the product as in relation to the fact whether there was a direct or indirect sponsorship or approval of the product.

In addition, the court also held that plaintiff had infringed defendant's trademarks, resulting in a pan-European prohibition to use said packages.