Accepted unauthorised use of others’ trade marks
It’s not uncommon for businesses to drop names. A proprietor offers a repair service for certain types of cars. A company sells sleaves for certain phones. They both wish to market their products and services, but in order to describe for which cars or which phones they can be useful, they have to use a name (or more importantly a trade mark) that doesn’t belong to them. The question is simple: is this allowed without the express permission of the trade mark proprietor, or is the proprietor within their right to deny his use?

Those familiar with the field will be quick to note that this is clearly specified by both the Trade Mark Directive (TMD) and the EU Trade Mark Regulation (EUTMR). Before 2015, these stated “A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade […] the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts […] provided he uses them in accordance with honest practices in industrial or commercial matters”.

The Court of Justice of the European Union also clarified what this meant. In BMW/Deenik the Court specified that these circumstances can be said to exist when use of the trade mark is for the purpose of informing the public that the unauthorised user is specialised in the said goods, or if the user carries out repairs or maintenance on the said goods. In Gillette/LA-Laboratories the CJEU zoomed in on the requirement of necessity, stating that it is only necessary to use the trade mark when it constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product.

Amendments to the TMD and EUTMR provisions
At this point the matter should have been clear and resolved. However, the EU legislator altered the wording of the provision of the TMD and EUTMR in 2015. This amendment removed the use of the phrase “where it is necessary”, leaving only the requirement of honest practices. This muddied the water significantly.

A grammatical reading of the new wording appears to suggest that it is no longer required that the use be necessary to indicate the intended purpose. However, this interpretation would open the door to all manner of comparative advertising and free riding. On the other hand, a reading of the new wording that does not change the meaning at all would imply that the legislator made the change for no reason whatsoever, which is equally incomprehensible. This leads some authors to interpret the change as meaning that the legislator wished to codify the existing jurisprudence of the CJEU. Unfortunately, the legislator chose not to elucidate the purpose of this change adequately. The Explanatory Memorandum of the amendment stated that the legislator considered it necessary to add “an explicit limitation covering referential use in general”. This once again does not clarify the matter.

The approaches of national courts
In order to understand how the provision should now be read, a look at national implementations of the provision could provide elusive answers. According to some national courts, the requirement of necessity must be separated from honest use. In France, Spain, Germany and the UK, the necessity portion of the test only requires that there be some general reason why the mark is being used, while the (separate) honest use test is where the requirements of BMW/Deenik and Gillette/LA Laboratories is carried out. Removal of the necessity requirement would therefore have little to no effect on these jurisdictions.

The Dutch courts, however, appear to apply the CJEU’s tests during the necessity portion of the test. Removal of this test would lead to a significant narrowing of the scope of protection. Dutch courts have, thus far, simply ignored the change in wording. This approach is being challenged in the wake of the NXP/Infineon ruling. The Dutch AG has recommended that this question be laid at the feet of the CJEU once again.

The true meaning of the provision will lie somewhere in between the two extremes of changing nothing at all, and radically narrowing the scope of protection. It is submitted that the CJEU will likely adopt an approach similar to France, Spain, Germany and the UK, which will broaden the scope of possible scenarios in which referential use can be applied. This would also be in line with the Explanatory Memorandum and would still apply the criteria developed in the BMW/Deenik and Gillette/LA Laboratories judgments.