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
Date Written: June 1, 2007
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: Suggested Citation