European e-Justice Portal - Case Law
Close

BETA VERSION OF THE PORTAL IS NOW AVAILABLE!

Visit the BETA version of the European e-Justice Portal and give us feedback of your experience!

 
 

Navigation path


menu starting dummy link

Page navigation

menu starting dummy link

Case Details

Case Details
National ID 17 Ob 2/11k
Member State Austria
Common Name 17 Ob 2/11k
Decision type Supreme court decision
Decision date 23/03/2011
Court Supreme Court
Subject
Plaintiff Velux
Defendant Unknown
Keywords comparative advertising, trade mark, unfair commercial practices, unfair competition

Misleading and Comparative Advertising Directive, Article 3 Misleading and Comparative Advertising Directive, Article 4, (a) Misleading and Comparative Advertising Directive, Article 4, (d) Misleading and Comparative Advertising Directive, Article 4, (f)

(1) Comparative advertising may constitute an infringement of a trademark if the comparative advertising does not fulfil the requirements set out in Directive 2006/114/EC.
(2) The indication of trademarks or other signs of competitors within comparative advertising is only permissible if it is necessary and appropriate to fulfil the purpose of objectively informing consumers about advantages of different products and services.
The plaintiff and defendant are both manufacturers of skylight windows and are offering them on the Austrian market, but the plaintiff has a market share of about 85 % and is known for his high-quality windows. The windows manufactured by the plaintiff have different measurements as those of competitors. The defendant started to produce special standard renovation windows with the same measurements as those of the plaintiff and advertised these products on the internet. The following text was included in the advertisement:
"Typical R***: Always the perfect solution. […] Regardless of whether you want to replace an old R*** skylight window, a Velux skylight window or a window made to measure: With a renovation window of R*** you choose premium quality and sophisticated technique."
Part of the internet appearance is a presentation of a size chart with the note "Velux size identification" including a comparison with the defendant's products.
The plaintiff filed a cease and desist order based on trademark law (as the defendant used trademarks of the plaintiff).
The court of first instance dismissed the requested order because of the different writing of the trademark (in uppercase letters) which is apparent for average consumers; because of it, there is no danger of confusion.
The appellate court confirmed the decision of the court of first instance.
According to the court, it makes no difference for the identity of a trademark which letters (uppercase or lowercase) are used to display the trademark.
Further, the court made a reference to the ECJ decision C-487/07 (L'Oréal) saying that comparative advertising may also constitute an infringement of a trademark if the comparative advertising does not fulfil the requirements set out in Directive 2006/114/EC.
The court decided that in this case the defendant has violated article 4(f) of Directive 2006/114/EC (implemented into Austrian law by § 2a Unfair Competition Act) by using the reputation of the plaintiff's trademark in an unfair way to advertise for his own products. Under the present circumstances, it was not necessary for the defendant to state the trademark of the market leader (plaintiff's trademark) to communicate to the opposite market side essential information, as every skylight window may be replaced by the defendant's products.
In the opinion of the court, the defendant attracts attention unreasonably by using the reputation of someone else's trademark, which the defendant's products would not have attracted on their own.
Thereby it is not important that the trademark use is also violating article 4(a) and (d) of Directive 2006/114/EC on misleading and degrading comparative advertising.
The court determined that the indication for trademarks or other signs of competitors within comparative advertising is only permissible if it is necessary and appropriate to fulfil the purpose (stated in Directive 2006/114/EC) to objectively inform consumers about advantages of different products and services. In this case, the indication of the plaintiff's trademark was not necessary to advertise the products of the defendant.
(1) May comparative advertising also constitute an infringement of a trademark?
(2) Under which circumstances is the indication of trademarks or other signs of competitors permissible as comparative advertising?
Full Text: Full Text

No results available

No results available

The appeal was partly granted.