The ECJ and Aural Trade-mark Similarity: Sounds Like Infringement?

In a recent decision, Gerolsteiner Brunnen & Co v Putsch, the European Court of Justice (ECJ) held that a trade-mark owner in the European Union cannot prevent a third party from using a phonetically similar geographical indication if that use is in accordance with honest practices in industrial or commercial matters. Gerolsteiner produced and marketed soft drinks in Germany under the registered trade-mark GERRI. Putsch marketed mineral water products in Germany using the name KERRY SPRING, products which were manufactured and bottled in Ireland using water from a spring called "Kerry Spring". Gerolsteiner brought an action in a German court against Putsch for infringement of its registered trade-mark rights. Although the German court found that there existed a likelihood of aural confusion between GERRI and KERRI, it referred the matter to the ECJ to determine whether such a likelihood of confusion would entitle Gerolsteiner to prevent Putsch from using the geographical indication. The ECJ held that, in these circumstances, the trade-mark owner may prevent the use of the geographical indication only if that use is not in accordance with honest practices in industrial or commercial matters. It was for the national court to carry out an overall assessment of all the circumstances of the particular case to determine whether the geographical indication was being used in accordance with "honest practice". For a copy of the decision, see: http://oami.eu.int/en/mark/aspects/pdf/JJ020100.pdf. Summary by: Hung Nguyen