A question concerning due cause and prior use in good faith has been referred to the Court of Justice of the European Union in Case C-65/12 Leidseplein Beheer, this being a reference from the Dutch Supreme Court.

Red Bull commenced the litigation even though prior to registering its mark in 1983, ‘The Bulldog’ had been used in good faith as a trading name for ‘restaurant and catering services where drinks were sold’, and had been used for, and during, various merchandising activities. The dispute was litigated up to the Dutch Supreme Court.

The Dutch Supreme Court noted that the Amsterdam Court of Appeal had erred when it had applied the Benelux IP Convention’s concept of ‘due cause’ set out in Article 2.20(1)(c) together with its attendant case law of Claeryn v Klarein. The Benelux concept of ‘due cause’ should have been interpreted in accordance with the concept of ‘due cause’ found in Article 5(2) of trade mark law Directive 89/104 (now Directive 2008/95). However, it was not clear from the CJEU’s ‘keyword advertising’ judgment in Case C-323/09, Interflora that the EU’s concept of ‘due cause’ was in and of itself broader than the Benelux-concept of ‘due cause’ in circumstances, such as these, where the sign was being used in a trading name and in good faith before the registration of the mark with a reputation.

Question Referred

According to the Curia website, the Dutch Supreme Court asked:

Is Article 5(2) of Directive 89/104/EEC to be interpreted as meaning that there can be due cause within the meaning of that provision also where the sign that is identical or similar to the trade mark with a reputation was already being used in good faith by the third party/parties concerned before that trade mark was filed? 

This information was first published on EU Law Radar, a weblog which is compiled and written by Stephen Vousden. Stephen, who has practised as a barrister, writes regularly about EU law. Class 46 is grateful to Stephen for permission to reproduce this item.