[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner. 　　

[background] 　　

2013 years, L' Oreal Group discovery Equivalenza Retail franchisees sell private label perfumes claiming that their products are imitations L' Oreal And other imitations of the company's famous perfume brands. In fact, Equivalenza The commodity comparison table provided shows, Each fragrance it sells uses a specific code corresponding to a famous perfume brand. 　　L' Oreal After investigation and verification, Before taking legal action, Through friendly negotiation with Equivalenza in 2014 years 1 month 30 Daily signing of contract (Hereinafter referred to as "Contract involved" ) . In this contract, Equivalenza Admitted that its business practices were illegal and unfair, Agree to stop using the third party's trademark in future sales activities, And explicitly incorporate this obligation into licensing and franchise agreements with its franchisees (Hereinafter referred to as "Dispute agreement" ) . 　　Shortly after the contract was signed, L' Oreal Found at least five still in Madrid Equivalenza Licensed franchise stores and several stores in Portugal continue to be used L' Oreal The logo promotes its perfume products. simultaneously, Also found that Equivalenza On its franchise sites and some of its social platforms "Equivalenza Do essence only" , "Perfume trend" , "Cheap high-end perfume" , "White label (white label) perfume" , and "We guarantee it will smell exactly like your favorite perfume" Etc. 　　Equivalenza After refusing to perform the contractual obligations previously agreed upon, L' Oreal Take the case to the EU Trademark Court, The main causes of action include breach of contract and unfair competition, Accompanied by a well-known trademark infringement action. 　　2017 years 11 month 21 day, Court No. 3 of the European Union Trademark Court in Alicante gave its judgment, Partially support the plaintiff's claim, Find the defendant guilty 2014 years 1 month 30 Japanese contract agreement, Total liquidated damages payable 36. 7 Ten thousand euros. but, The court dismissed the plaintiff's other claims, That is, the defendant is not considered to have infringed the right of well-known trademark, and Equivalenza Does not constitute unfair competition. 　　Equivalenza Not accept the judgment of first instance, Appeal to the Court of Appeal in Alicante, Holds that the court of first instance does not have substantive and territorial jurisdiction to hear the dispute, The open-ended contract itself is invalid and illegal, And errors in the court's review of compliance evidence. 　　L' Oreal In the appeal reply to the court of first instance on the defendant in the contract admitted the existence of unfair competition in the contract part of the interpretation of the dispute. 　　

[conclusion] 　　

The appeals court first confirmed, The court of first instance has jurisdiction over the dispute, Because the terms of the contract signed by both parties voluntarily involve the EU trademark infringement dispute, Therefore, It also has jurisdiction over the remaining claims relating to it. 　　On injury to third party (Licensee or franchisee) The interest of the contract is invalid, The court interpreted that, The contract in question was designed to protect exclusive rights, Require the defendant to inform the licensee and franchisee of their obligations in the license agreement and franchise agreement, Not to increase its burden maliciously. 　　similarly, The court held that the contract in question did not constitute an agreement to limit competition, Also not correct Equivalenza Cause damage. Because the content of the contract is free will of both parties, The purpose is to prevent either party from infringing the other party's trademark rights and unfair competition against the other party. Therefore, The court ruled that the contract in question did not limit or exclude competition, contrary, This contract helps consumers to correctly associate the protected trademark with the goods and services for which it is designated, Avoid confusion, Objectively conducive to market order. 　　On the grounds that the trademark right has timeliness, A request for invalidation of the contract in question, The court refused to support. The reason is that, The trademark right may continue to be valid by renewal, And under any circumstances, For competitive purposes, The protection of the exclusive right to use a trademark may be extended beyond the expiration of its term of validity. 　　As to Equivalenza Grounds of appeal that the court of first instance was at fault in examining evidence, The appellate court refused to uphold it. The evidence submitted included, Franchisee by word of mouth, Display in the comparison table, And other ways to induce users and consumers to use the trademarks involved, It is sufficient to prove that the defendant failed to comply with the contract during its validity. 　　Finally, about L' Oreal The question of whether the unfair competition law should be applied to the contract involved is not clarified in the judgment of the first instance, The Court of Appeal dismissed the appeal, The reason is that, The plaintiff's original claim did not require the court to interpret and clarify the terms of the contract involved. Even when asked for clarification, It has nothing to do with breach of contract, It involves acts of unfair competition. The court of first instance has ruled whether the defendant's actions constitute unfair competition, The appeal is original in the first instance, None of the defendants challenged that part of the verdict. 　　

[comment] 　　

Although this case addresses the validity and compliance of a private contract by a civil subject, But it indirectly involves trademark infringement——Does not directly attach another person's trademark to goods, But in the sales process and promotional materials (In this case, for example, mailing product catalogs) The use of another's trademark in, And unfair competition practices in advertising and promotional activities. 　　It's worth paying special attention to, In its decision, the Court of Appeal made a clear distinction between trademark infringement and unfair competition: "The use of another's trademark in sales, May constitute a trademark infringement. but, Take advantage of the popularity of others' trademarks, Reputation and fame, Sell its own goods, Even if there is no explicit reference to someone else's trademark in the sale process, May still constitute an act of unfair competition" . 　　In fact, This case is decided by the European Court of Justice 2009 years 6 month 18 Day control C-487/07 The verdict is closely related, In that judgment, the European Court of Justice laid the foundation for a boycott of parasitic practices by low-cost retail or chain stores, Their business model is to sell knockoffs of big companies' products, Or deliberately imitate others' products in advertising. 　　

compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights