Nominative Use and Honest Practices in Industrial and Commercial Matters: A Very European History

Intellectual Property Quarterly, p. 117, 2007

39 Pages Posted: 8 Jul 2008 Last revised: 6 Jan 2010

See all articles by Ilanah Simon Fhima

Ilanah Simon Fhima

Institute of Brand and Innovation Law, Unversity College London

Date Written: June 1, 2007

Abstract

This article was born of a comparison. In the United States, use of a trade mark by a later user to identify the goods or services of an earlier user cannot dilute the earlier mark. This is known as the doctrine of 'nominative fair use'. Does this doctrine have an equivalent in Europe? The answer is not directly. However, it may be possible for an EU-based earlier user to rely on the descriptive use defence. To do so, he must show not only that his use is descriptive, but also that it is in accordance with honest practices in industrial and commercial matter. However, I discovered that this so-called 'honest practices proviso' is problematic in dilution cases because of the high level of coincidence between practices that have been said by the ECJ to be dishonest and the definition of infringement by blurring, which would effectively rule out reliance on the defences in a large number of dilution cases. There was one exception - detriment to distinctive character (the European equivalent of dilution by blurring) - which has not been mentioned by the ECJ as being dishonest for proviso purposes. The article considers what the ECJ's definition of the honest practices proviso means for dilution cases specifically and what lessons can be learned for trade mark law more generally.

Keywords: defences, dilution, EU, infringement, trade marks

JEL Classification: O34, K00

Suggested Citation

Simon, Ilanah, Nominative Use and Honest Practices in Industrial and Commercial Matters: A Very European History (June 1, 2007). Intellectual Property Quarterly, p. 117, 2007, Available at SSRN: https://ssrn.com/abstract=1156822

Ilanah Simon (Contact Author)

Institute of Brand and Innovation Law, Unversity College London ( email )

Gower St
London WC1E OEG, WC1E 6BT
United Kingdom

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