Trade Mark Limitations and the 'Honest Practices' Proviso: Mapping the Road Towards a Flexible Approach

Abstract

The ‘honest practices in industrial or commercial matters’ proviso in Art. 14(2) of the Trade Mark Directive 2015/2436 and Art. 14(2) of the European Union Trade Mark Regulation constitutes the lens through which the applicability of trade mark limitations under EU trade mark law should be assessed. The interpretation of the ‘honest practices’ proviso must strive towards securing the proper flexibility of assessment on the premise of proportionate balancing of competing interests. The paper submits that achieving this goal necessitates a shift from a one-sided perspective that prioritizes the interests of trade mark proprietors towards a focus on the honesty of third-party conduct. The presence of some harm to the trade mark owner's interests should not necessarily preclude a third party from adhering to honest practices, provided that there are compelling arguments rooted in the pertinent context. The latter should encompass all relevant circumstances of the case, including general considerations such as circular economy needs, freedom of expression (notably artistic expression), and consumer protection and the right to information about an alternative offer. While empirical research on consumer perceptions might not always provide a solid basis for assessing the acceptable proportionality of harm to the trade mark owner, the balancing could be supported by reliance on normative considerations, including those derived from higher-ranking provisions concerning the protection of fundamental rights.

Keywords: EU trademark law, EU trademark law, trade mark limitations, trademark limitations, referential use, own name defence, honest practices, due cause, trade mark infringement, trademark infringement, circular economy, freedom of expression, consumer confusion, comparative advertising, Gillette