The label read: "All Parason Flexor and Gillette Sensor handles are compatible with this blade" – Parason Flexor being LA-Laboratories' own brand.
Gillette sued, alleging that the label created a connection in the mind of consumers between the products marketed by LA-Laboratories and those of the Gillette companies, or gave the impression that that company was authorized to use the Gillette and Sensor marks.
The Finnish Court of First Instance found in favour of Gillette, following a provision in the EU's Trade Mark Directive. It states that a trade mark owner may not prohibit a third party from using the mark in trade where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided such use is made in accordance with honest practices in industrial or commercial matters.
A razor blade, said the Court of First Instance, is not a spare part or an accessory, but an essential part of the product. LA-Laboratories therefore had no protection under the Directive.
The Appeals Court disagreed, finding that where, as in this case, the razor was made up of a handle and replaceable blades, the blades were spare parts – and therefore no trade mark infringement had taken place.
The case was appealed again, and the Finnish Supreme Court (the Korkein oikeus) asked the European Court of Justice for help with the proper interpretation of the Directive.
The European Court of Justice found that the reference in the Directive to "spare parts and accessories" was given as an example only. It did not therefore have to determine the status of a razor blade.
The Court instead looked at the question of whether the use of the trade mark was necessary.
The Court said that, to answer this, the national court should assess whether the use of the trade mark was in practice the only means of providing the public with comprehensible and complete information as to the intended purpose of the product.
It should also assess the nature of the public for which the product marketed by the third party is intended, said the Court.
The Court then considered the question of "honest use", finding that this is essentially the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.
According to the Court, use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example:
The Court wrote:
"The fact that a third party uses a trade mark of which it is not the owner in order to indicate the intended purpose of its product does not necessarily mean that it is presenting that product as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark."
The question is whether the presentation is in accordance with honest practices in industrial and commercial matters.
Finally, the Court said that where a third party that uses another's trade mark markets not only a spare part or an accessory but also the product itself with which the spare part or accessory is intended to be used, the same conditions apply as regards the need to indicate the intended purpose of a product or service and as regards honest use.
The case will now be returned back to the Korkein oikeus for a final ruling.
