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Published online by Cambridge University Press: 21 July 2009
Trademark delimitation agreements are entered into for the purpose of avoiding or settling disputes between owners of conflicting trademarks by defining the spheres within which trademarks may be used. The authors of this article treat the relevant case law and literature on the conflict between trademark delimitation agreements and the Treaty provisions on the free movement of goods and competition in an analytical and critical manner. They propose that the Commission and the ECJ accept delimitation agreements that cause fewer restrictions on trade and competition than would have existed in the absence of the agreement as compatible with Article 85 of the EEC Treaty, in so far as the restrictions flowing from the agreement are covered by the specific subject matter of the trademarks.
1. See, e.g., 78/70, Deutsche Grammophon v. Metro, ECR 1971,487; 192/73, Van Zuylen v. Hag, ECR 1974, 731; 15/74, Centrafarm v. Sterling Drug, ECR 1974, 1174; 16/74, Centrafarm v. Winthrop, ECR 1974, 1183; 187/80, Merck v. Stephar, ECR 1981,2063.
2. See, e.g., 40/70, Sirena v. Eda, ECR 1971,69; 51/75, EMI v. CBS, ECR 1976, 811.
3. See, e.g., 53/87, Maxicar v. Renault, Oct. 5,1988 (not yet reported); 238/87, Volvo v. Veng (UK) Ltd., Oct. 5,1988 (not yet reported); joined Cases 110/88,241/88 and 242/88, Lucazeau et al. v. SACEM, July 13,1989 (not yet reported).
4. Centrafarm v. Winthrop, supra note 1, at 1194.
5. Van Zuylen v. Hag, supra note 1, at 743.
6. 119/75, Terrapin v. Terranova, ECR 1976, 1039.
7. Council Directive 89/104,0.J. (L 40/1) 1989; the regulation creating a single Community mark is still being discussed; see Com. (84) 470 final.
8. 0.J. L 125/27 1975.
9. Cf.CML Rep. 1975,378.
10. Regulation No. 17 of the Council of Feb. 6,1962, as amended, JO 1959 – 62, 87.
11. Cf. the Commission's decision in Penneys, infra note 13, where the Commission took into account that Penneys Ireland had noi established any goodwill under the name Penneys in any country other than Ireland.
12. Sixth Report on Competition Policy (1976), point 165.
13. OJ.(L 60/19) 1978.
14. Paris Convention for the Protection of Industrial Property as revised at Stockholm in 1967; Artical S(I.C) reads: “If, in any country, use of the registered mark is compulsory, the registration may be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction.”
15. Seventh Report on Competition Policy (1977), point 138.
16. Supra note 1.
17. Supra note 6.
18. Eighth Report on Competition Policy (1978), point 125.
19. Eleventh Report on Competition Policy (1981), point 97.
20. Particularly striking is a decision of the Bundespatent- gericht (BPatG, 28.3.1973, GRUR 1975, at 74) where it held that the mark ‘LUCKY WHIP’ was liable to be confused with the mark ‘Schoeller-Nucki’. In his Opinion in 10/89, CNL v. Hag, delivered on March 13,1990 (not yet reported) at Para. 36, Advocate General Jacobs referred to this decision as one “that seems to postulate a body of customers afflicted with an acute form of dyslexia”.
21. Cf. the opinion of Advocate General Jacobs in CNL Sucal v. Hag, supra note 20, Para. 48.
22. It can be inferred from Maxicar v. Renault and Volvo v. Veng (UK) Ltd., supra note 3, that the exercise of intellectual property rights flowing from national laws cannot, in itself, constitute an abuse of a dominant position within the meaning of Article 86.
23. 0.J. (L 379/19) 1982.
24. Supra note 6.
25. Cf. Para. 3(A.f) of the Commission's decision.
26. 35/83, BAT v. Commission, ECR 1985,363.
27. Id., at 385.
28. Press Release of Feb. 28, 1989.
29. Press Release of Feb. 2,1990.
30. F.-K. Beier, Trademark Conflicts in the Common Market: Can They Be Solved by Means of Distinguishing Additions?, IIC 239 (1978).
31. Id..
32. Supra note 20.
33. In BAT/Segers the Commission held that there was no “serious risk of confusion”. In Synthex/Synthelabo the Commission held that the risk of confusion was not great enough to justify the restraint.
34. In 193/83, Windsurfing International v. Commission, ECR 1986,611, the ECJ condemned restrictions in a patent licence which went beyond the specific subject matter of the patent as infringements of Article 85( 1). This would seem to imply that restrictions falling within the specific subject matter of industrial property rights do not fall under Article 85(1). P. Eeckman, Indusiriële Eigendomsrechten en eenheid van de markt in de rechtspraak van het Hofvan Jusiitie, in Europees Karielrecht anno 1980 255 (1981), note 78, has pointed out that agreements concerning the exercise of industrial property rights cannot ipso facto escape from the prohibition of Article 85( 1) on the ground that the restrictive effects resulting from the agreement could also have been attained by the exercise of the industrial property rights. Generally speaking this may be correct, but it is submitted that this is different if the agreement inquestion serves a legitimate purpose, such as the solving of a trademark conflict.
35. Supra note 1.
36. Supra note 6.
37. See also D. Hoffmann, Kollision ursprungsgleicher idenlischer Warenzeichen innerhalb der Europäischen Gemeinschaften, RIW/AWD 294 (1980).
38. F.-K. Beier, supra note 30, points out that such cases are rare, but their number may increase substantially now that the FRG and the GDR are unified or when other former Comecon countries join the EC.
39. 19/84, Pharmon BV v. Hoechst AG, ECR 1988,89; see also P. Demaret, Industrial property rights, compulsory licences and the free movement of goods under Community law, IIC 161 (1987), the reaction thereto of Ch. Kleiner, Wurde Kaffee Hag durch Pharmon ‘overruled’?, GRUR Int. 229 (1987); P. Oliver, A review on the case law of the Court of Justice on Articles 30 to 36 EEC in 1985, CMLRev 325 (1986); G. Marenco and K. Banks, Intellectual Property and the Community Rules on Free Movement: Discrimination Unearthed, ELR 252 (1990)
40. 10/89, judgement of Oct. 17,1990 (not yet reported).
41. The Court mentioned the fact that the expropriation had taken place before the creation of the Community, but this would not seem a decisive factor, decisive in our view is the lack of consent; of the position in Pharmon v. Hoechst, where the compulsary patent licence had been granted after the creation of the Community.
42. Cf. the Opinion of Advocate General Jacobs in CNL Sucal v. Hag, supra note 20, Para. 63.
43. We use the term ‘geographical delimitation’ for agreements whereby the parties agree to refrain from marketing goods under the conflicting trademarks in a territory reserved to the other party.
44. Supra note 8, at Para. 11(4).
45. This may be different if the parties have opted for an arrangement whereby they license each other under the conflicting trademarks in their respective territories, e.g. company A licenses company B under its trademark registered in the territory of company B and company B licenses company A under its trademark registered in the territory of company A. In that event goods marketed by company A in its territory which bear the mark licensed by B may be regarded as goods marketed with the consent of company B and vice versa.
46. E.g., party A assigns to party B its registrations of conflicting trademarks in territory B and party B assigns to party A its registrations of conflicting trademarks in territory A.
47. Supra note 2.
48. Supra note 2.
49. O.J.L 237/12 of 1974.
50. If it is held in these cases that the territorial limita- tions resulting from the agreement are incompatible with Article 85( I) and that they cannot be exempted under Article 85(3), the automatic nullity which that would involve by virtue of Article 85(2) would only apply to those parts of the agreements affected by the prohibition contained in Article 85( 1), or to the whole if it appeared that those parts are not severable from the agreement itself (cf. the judgment of the ECJ in 56/65, Société Technique Miniére v. Maschinenbau Ulm.ECR 1966,235). The application of Article 85 to this type of delimitation agreement cannot bring about the extension of the geographical scope of the agreement. In other words: neither party can force the other party to adapt the contents of the agreement in such a way that it complies with Article 85 (cf. by analogy the judgment of the ECJ in 10/86, VAG v. Magne, ECR 1986,4084).
51. The products reserved to company X and company Y do not necessarily have to be similar. Certain member states, including the Benelux countries, also allow a trademark owner to prevent the marketing under his trademark of products which are not similar to those for which the trademark is registered, cf. for example Art. 13 A(2) of the Uniform Benelux Trademark Law (Eenvormige BenehixMerkenwei). The trademark Directive (Council Directive 89/104 O.J. L40/I of 1989) allows member states to provide that “the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trademark in relation to goods or services which are not similar to those for which the trademark is registered, where the latter has a reputation in the member state and where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark”, (Article 5(2)). The same provision has been included in the amended proposal for a Council Regulation on the Community trademark (Com (84) 470 final). The delimitation agreements examined by the Commission and the ECJ were all concerned with a(n) (alleged) risk of confusion between trademarks used for similar products (with the possible exception of Hershey/Herschi). However, in our opinion the principles developed in these cases could apply mutatis mutandis to delimitation agreements eliminating a risk of dilution arising from the use of similar trademarks for dissimilar products.
52. As with geographical delimitation, the lost goodwill will generally have little value; our comments in Para. 4 above apply mutatis mutandis.
53. 193/83, Windsurfing International v. Commission, ECR 1986,611.
54. 65/86, Bayer AG and Maschinenfabrik Hennecke GmbH v. Heinz Süllhöfer, Sept. 27,1988 (not yet reported).
55. J.S. Venit, In the wake ofWindswfmg: patent licensing in the common market, in Hawk (ed.), Fordham Corporate Law Institute 517 (1986).
56. Perhaps the two judgements can be reconciled with each other by considering the different interests involved in challenging patents and trademarks. In Winsurfing the ICJ, in finding a no-challenge clause concerning a patent incompatible with Article 85 (1), referred to the public interest which required the elimination of obstacles to economic activity when a patent is granted in error. Arguably, such public interest considerations are less compelling where trademarks are concerned: in its Decision in BAT v. Segers the Commission argued that the interests of competion are served by a power to remove dominant trademarks from the register.
57. V. Korah, No Duty to License Independent Repairers to Make Spare Parts: The Renault, Volvo and Bayer & Hennecke Cases, 12 EIPR 385 (1988).
58. W. Alexander, annotation of 35/83, BAT v. Commission, CMLRev. 717 (1985).
59. Supra note 7.
60. Supra note 20.
61. Supra note 7.