Use of a well-known mark for spare parts allowed

In a recent decision the Austrian Supreme Court had decided a dispute between the trade mark owners of "ORAL B"® and "Dr. Best"®. Both companies produce toothbrushes. The dispute particularly focused on the construction of the provision of the Austrian Trade Mark Act which corresponds to Art. 12 CTMR, i.e. limitations of the effects of a trade mark in case use of a mark is necessary to indicate the intended purpose of the product, in particular as a spare part.

"Dr. Best"® offered brush heads for electric toothbrushes of the well-known trade mark "ORAL B"®. Via reference to a small asterisk it was announced on the backside of the packaging that "ORAL B"® is not a trade mark of the producer of the brush heads. The claimant argued that such a use of the well-known mark was not justified by Art. 12 CTMR, in particular as the use of the brush heads would reduce the efficiency and persistency of the original electrical toothbrushes. The alleged negative effects on the original electrical toothbrushes were supported by means of a private expert opinion. The claimant asked for a preliminary injunction which was granted in first instance. However, as the negative effect on the original electrical toothbrushes was successfully contested by the defendant, the Court of Appeals lifted the preliminary injunction. This ruling was confirmed by the Austrian Supreme Court:

According to the decision of the Austrian Supreme Court the defendant used the trade mark in accordance with honest practices in industrial or commercial matters as the use of the trade mark was practically the only way to inform the public on the intended purpose of the brush heads. Such a use must be tolerated by the trade mark owner even in case the trade mark is well-known and the competitor takes - to a certain extent - advantage of the repute of the trade mark. This is particularly true in case the competitor only uses the word and not the figurative mark as registered. Additionally, the trade mark of the producer of the spare brush heads was used in bigger letters than the allegedly infringed trade mark. Accordingly, it was clear to Austrian consumers that the use of the trade mark was merely meant as an indication for the intended purpose and not to market original brush heads of "ORAL B"®. A corresponding reasoning was given regarding similar claims based on unfair competition law.

This decision once again highlights that even a well-known mark may be used for indicating a specific purpose of a competitor's product. Thus the competitor may even take (unfair) advantage of the well-known mark he refers to without doing any wrong.

Dr. Rainer Beetz, LL.M.