SIEMENS Vs VIPA

Competitor's use of identical order is lawful

The IPKat has been pondering Case C-59/05 Siemens AG v VIPA GmbH, decided by the European Court of Justice on the Thursday of last week.

In 1983 Siemens, who made and sold SIMANTEC programmable controllers, introduced a system of order numbers for the controllers and add-on components. VIPA made and sold components that were compatible with SIMANTEC controllers. From 1988, VIPA employed an identification system that was virtually identical to that of Siemens. Siemens sued VIPA for trade mark infringement, alleging that VIPA took unfair advantage of the reputation of its products. The German Bundesgerichtshof, seeking guidance on Council Directive 84/450 on misleading and comparative advertising, stayed the proceedings and referred to the European Court of Justice the question whether, by using in its catalogues the core elements of a manufacturer’s distinguishing mark which was known in trade circles, a competing supplier was taking unfair advantage of the reputation of that distinguishing mark within the meaning of Article 3a(1)(g) of Directive 84/450.

The court ruled as follows:

"Article 3a(1)(g) of Council Directive 84/450 [as amended] must be interpreted as meaning that, in circumstances such as those in the main proceedings, by using in its catalogues the core element of a manufacturer’s distinguishing mark which is known in specialist circles, a competing supplier does not take unfair advantage of the reputation of that distinguishing mark".

There was no unfair advantage because

* the competing products were aimed at a specialist public which was much less likely than final consumers to associate the reputation of Siemens' products with that of VIPA's;

* the use of VIPA's acronym in its own order numbers (eg Siemens' 6ES5 928-3UB21 product order number, corresponding to VIPA's VIPA 928-3UB21) made it possible to distinguish between the parties' respective products, thus preventing a false impression being given either as to the origin of VIPA's products or as to there being any association between VIPA and Siemens.

The IPKat says this decision is uncontroversial: it's in line with earlier ECJ rulings in Cases C-112/99 Toshiba Europe [2002] ETMR 26 and C-44/01Pippig Augenoptik [2004] ETMR 5. Merpel agrees and adds, this case didn't reach the ECJ till February 2005 and was disposed of just one year later: that shows it can't have caused the court too many headaches.