Evidence of – a risk of - a change in economic behaviour Introduction II 8th Trademark Law Institute Symposium Trade marks, honest trade, dilution Radboud University of Nijmegen , 13-14 April 2018   Łukasz Żelechowski University of Warsaw

Starting point Requirement of either an actual and present injury to the mark for the purposes of extended protection or a serious likelihood that such an injury will occur in the future Need to provide a proof ‘In order to benefit from the protection introduced by Article 4(4)(a) of the Directive, the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’ (Intel, C‑252/07 [37] with regard to all three types of interference)

Change or a serious likelihood of a change in the economic behaviour Applicable to dilution (Intel, C‑252/07 [77]) Objective condition; a change cannot be deduced solely from subjective elements such as consumers’ perceptions (Environmental Manufacturing, CJ, C-383/12 P [37]) Dispersion of identity and hold of the mark in the public mind versus proof of a change or risk of change of economic behaviour: separate requirements (Environmental Manufacturing, CJ [35-36]) or a single requirement: two sides of the same coin? Is a ‘higher standard of proof’ of a change or risk of a change of the economic behaviour necessary to avoid improper appropriation of certain signs on the premise of safeguarding competition (Environmental Manufacturing, CJ [41])? Could the proper balancing be rather provided by the application of the ‘due cause’ clause instead of requiring a difficult ‘higher standard of proof’? (dubious in dilution cases in the light of ‘due cause’ factors set out in Interflora, CJ, C-323/09 [91]) Arguably applicable to tarnishment

Demonstrating dilution (I) Direct evidence regarding economic behaviour of consumers Establishing a likelihood of confusion, evidencing actual confusion Is there room for empirical evidence regarding economic behaviour in cases where no likelihood of confusion can be established? Employment of logical deductions concerning the risk of a change in economic behaviour of consumers Logical deductions made on the basis of a proper analysis (as referred to below) constitute prima facie evidence of a risk which is non-hypothetical mere suppositions v not “mere suppositions” (founded on an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case - Environmental Manufacturing, CJ [43])

Demonstrating dilution (II) Indirect evidence substantiating more than ‘mere suppositions’ Experts’ opinions (experts on consumer behaviour, marketing psychology) filed along with a respective action? Experts appointed by the adjudicating body in respective proceedings? Factual presumptions, eg. based on a number of visits on a website - a possible a contrario implication with regard to dilution/tarnishment made in Coca Cola, GC, T-61/16 [106-107]? Support for allowing indirect evidence derived from other areas, such as proving acquired distinctiveness Eg. experts’ opinions on detriment as per analogy to statements of professional associations on acquired distinctiveness

Taking of unfair advantage Reason to take this type of interference into consideration: Where does it stand in terms of evidentiary difficulty in comparison with dilution/tarnishment? Starting point: It is an interference oriented at drawing a benefit by a third party; not a detriment-oriented type of interference ‘the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor’ (L’Oréal, CJ, C-487/07 [50]) In Tulliallan Burlington, GC, T‑120/16 (under appeal, C-155/18 P), the GC appears, however, to apply the ‘risk of a change in economic behaviour’ requirement to free-riding [42-43]

Demonstrating the ‘taking of unfair advantage’ Defining the image and arguing the transfer of image for specific goods/services (Coca Cola, GC, T-61/16 [114]; Tea Board, GC, T‑624/13 [141-145], appeals dismissed, CJ, joined cases C-673/15 P to C-676/15 P) Relevance of exceptionally strong reputation Exceptionally strong reputation + a link = ‘obvious’ taking of unfair advantage (Tea Board, GC [134, 150], You-Q, GC, T-369/10 [68-74] and CJ, C‑294/12 P [69]) Easily applied in cases of parody of famous marks - STYRIAGRA/VIAGRA, Austrian Supreme Court, judgment of 22.9.2009, 17 Ob 15/09v; PUDEL v PUMA, German Federal Court of Justice, judgment of 2.4.2015 I ZR 59/13; ‘LILA-POSTKARTE; German Federal Court of Justice: 3.2.2005, I ZR 159/02 (here, however, freedom of art was considered as justifying the ‘due cause’ defence). Logical deductions, Eg. use on the website with intentionally creating an association with the protected trademark in a non-EU country and not targeted at EU consumers considered as creating a serious risk of taking unfair advantage in the EU (Coca Cola, GC, T-61/16 [93-98]) Question: Is the apparently more relaxed approach to evidencing taking of unfair advantage than dilution/tarnishment justified in the light of a different nature of interference?

Thank you for your attention!