Background:

Buongiorno is a provider of information services via the internet and mobile phone network. In 2010, that provider launched an advertising campaign for the subscription of a paid service for the forwarding of multimedia content via SMS which it marketed under the name ‘Club Blinko’. Subscription to that service enabled participation in a prize draw, one of the prizes for which was a ‘ZARA gift card’ worth EUR 1 000. After clicking on the banner to access the prize draw, the subscriber saw the ZARA sign framed in a rectangle appear on the following screen, evoking the format of the gift cards.

Inditex brought an action for infringement before the Spanish courts against Buongiorno for infringement of the exclusive rights conferred by a national trade mark protecting the sign “ZARA” (hereinafter “ZARA trade mark”). The action was dismissed at first and second instance on the grounds that Buongiorno’s use of the ZARA trade mark did not harm the reputation of that trade mark and that there was no unfair advantage taken of its reputation.

Inditex lodged an appeal in cassation before the Supreme Court, which is the referring court, and in this context, that court raises the following question for a preliminary ruling.

The question referred for a preliminary ruling:

“Is Article 6(1)(c) of Directive [89/104] to be interpreted as meaning that the more general conduct now referred to in Article 14(1)(c) of Directive [2015/2436] – use “[of] the trade mark, for the purpose of designating goods or services as those of the proprietor of that trade mark or of referring to them” – is to be understood implicitly included in the limit on trade mark rights?”

CJEU Decision:

The answer to the question referred for a preliminary ruling must be that Article 6(1)(c) of Directive 2008/95 must be interpreted as meaning that it refers to use of the trade mark in the course of trade by a third party, in accordance with honest practices in industrial or commercial matters, for the purpose of designating goods or services as those of the proprietor of that trade mark or of referring to them only where such use of the trade mark is necessary to indicate the intended purpose of a product put on the market or of a service offered by that third party. And consequently it decides: “It is for the national court, in particular, to determine, having regard to all the circumstances of the main proceedings, whether Buongiorno, by means of the advertising campaign which it launched for the subscription of one of its services, which allowed participation in a prize draw in which one of the prizes consisted of a “ZARA gift card” and in which the subscriber saw the sign “ZARA” appear on the screen framed in a rectangle evoking the format of gift cards, made use of the ZARA trade mark within the meaning of Article 5 of Directive 2008/95 and, if so, to assess, in the light of Article 6(1) of that directive, whether such use was necessary to indicate the intended purpose of a service offered by Buongiorno and, if so, whether that use was in accordance with honest practices in industrial or commercial matters.

Case C 361/22 CJEU STJUE OF 11 January 2024