SONN Patentanwälte – IP Attorneys

"ski in ski out"

This is a registered Community trade mark. Its owner and plaintiff owns a hotel in an Austrian skiing area situated directly at the skiing slope so that one can directly ski to and from the hotel. The defendant owns a restaurant in the same skiing area. It advertises its business indirectly that its restaurant lies directly at the skiing slope: "always in the middle with Ski in & Ski out", "Ski in & Ski out ... in the whole winter". The plaintiff wanted to forbid the use of Ski in & Ski out. The defendant pointed to fair use under Art 12 lit b CTMR to which the plaintiff replied that the defendant would have to file an invalidity action before OHIM if it wants to use an identical mark. Since it did not file such action, it infringes the CTM.

The Court replied that the CJEU already clarified in C-108/97 (Chiemsee) that the fair use provision of Art 12 lit b gives a right to use a descriptive mark in a descriptive way provided it used in accordance with honest practice. The CJEU also clarified in C-100/02 (Geroldsteiner Brunnen GmbH & Co) that the fair use of descriptive terms (also as a trade mark) has no connection with absolute grounds for refusal and thus on invalidity actions.

Here the use by the defendant is according to honest business practices. It does not denigrate the CTM and it does not take unfair advantage of the trade mark. The lower the distinguishing characteristics of the mark are, the more the circles concerned will see in the used sign of the defendant an indication of a characteristic of the services.

In the present case, the distinguishing characteristics of the registered mark are very low. Signs like "Ski-in Ski-out" or similar are frequently used in the skiing area concerned to indicate the connection of businesses to that skiing area. Hence the use of "Ski in & Ski out" not as a trade mark is seen as descriptive and therefore fair use and therefor cannot be forbidden.

That decision shows that the descriptive use not as a trade mark of signs quasi-identical to a registered mark of low distinctiveness is possible without the defendant having to file an invalidity action.

DI Helmut Sonn