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United Kingdom

CJEU confirms expansion of referential use defence under EU trade mark law (Inditex v Buongiorno MyAlert, C‑361/22)

Published on: 01 February 2024

Published by a LexisNexis IP expert

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Industria de Diseño Textil SA (Inditex) v Buongiorno Myalert SA , Case C-361/22 What are the practical implications of this case?

The Court of Justice confirms that the exception operates as a broadly framed rule, despite the recurring and ambiguous wording ‘in particular’. The pertinent test is now whether the sign was used for identifying or referring to goods or services as those of the trade mark proprietor, so long as that use was in accordance with honest practices. A defendant may still invoke the earlier Gillette jurisprudence (see below), yet the court has underlined that the defence now has a wider reach than before. Claimants should closely assess the degree to which the challenged use aligns with ‘honest practices’, and weigh whether alternative causes of action—such as copyright infringement where a logo is deployed—might be more straightforward. It is also noteworthy that, in concluding there was no infringement, both the first‑instance and appellate courts in Spain relied on reasoning from L’Oreal v eBay, Case C‑324/09, and Interflora, Case C‑323/09—where...

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