Honestly, Neither Celine Nor Gillette Is Defensible!

Abstract

Article 6(1) of the European Trade Marks Directive provides a series of justifications for a third party to make unauthorized commercial use the proprietor s mark when his use is in accordance with honest practices in industrial and commercial matters. Recently in Gillette v. Parason and Celine SA v. Celine SARL, the ECJ has clarified what constituted honest practices. Essentially, the third party use must not give the impression that there is a commercial connection between the third party and the trade mark owner, must not affect the value of the trade mark by taking advantage of its distinctive character and must not denigrate the mark. Unfortunately, as I would illustrate in my paper, to avail himself of the honest use defense, the alleged infringer is required under Celine and Gillette to disprove the same elements that the trade mark proprietor would have already succeeded in proving when establishing that an actionable infringement had occurred. If the purpose of Article 6(1) is to provide a meaningful defense for a third party, the parameters of what would constitute honest practices must not be just a repetition of the elements that establish an infringement action. In other words, given that the proprietor has succeeded in establishing that the third party s sign (1) would lead to a likelihood of confusion over the origin of goods or (2) would take an unfair advantage of the trade mark s distinctive character or repute or (3) is detrimental to the repute, a defense must be open to the unauthorized user notwithstanding the existence of the abovementioned transgressions. In this paper, I would critique the current ECJ definition of honest use and also seek to provide an alternative formulation for honest practices.