## Facts

- Gillette owned Finnish trade marks GILLETTE and SENSOR for razors and related goods.
- Gillette sold razor handles and replaceable blades in Finland under those marks.
- LA-Laboratories sold razor blades under its own mark (PARASON FLEXOR) and placed a prominent sticker on the packaging stating that the blades were compatible with “Gillette Sensor handles.”
- LA-Laboratories had no licence or other authorization to use Gillette’s marks.
- Gillette claimed the compatibility statement created a consumer “link” between the products and implied authorization.
- A Finnish trial court found infringement based on eye-catching use of the marks on packaging.
- A Finnish appellate court treated the blades as spare parts and found no infringement because the compatibility information was useful and the packaging identified LA-Laboratories as the product’s origin.
- Finland’s Supreme Court referred questions to the ECJ on the scope of the EU-law limitation permitting necessary use of another’s mark to indicate intended purpose.

## Issues

1. When is use of another’s trade mark “necessary” to indicate the intended purpose of a product (including compatibility)?
2. Does the analysis differ if the product is an essential component rather than an accessory or spare part?
3. What factors determine whether such use is “in accordance with honest practices in industrial or commercial matters”?
4. Can the limitation apply where the third party markets both compatible parts and complete products?

## Decision

- The ECJ held that use of a proprietor’s mark to indicate intended purpose is permitted only if it is “necessary” and complies with honest practices; application of those standards is for the national court.
- “Necessary” means, in practice, the only means of giving the public comprehensible and complete information about intended purpose so as to preserve undistorted competition, assessed in light of the relevant public.
- The limitation is not confined to accessories or spare parts; the same criteria apply to any intended purpose.
- Honest-practices review requires considering whether the use implies a commercial connection, takes unfair advantage of or harms the mark’s distinctiveness or reputation, denigrates the mark, or presents the third party’s product as equivalent in quality or properties.
- A compatibility statement does not automatically amount to a claim of equivalent quality; that is a factual question.
- The limitation may apply even if the third party also sells complete products, not only parts or accessories.

## Legal Principles

- A trade mark proprietor cannot prohibit third-party use of the mark to indicate a product’s intended purpose where (1) use is necessary to give comprehensible and complete information to the relevant public and (2) the use follows honest commercial practices.
- “Necessary” turns on practical communicative need in the market, not merely on the availability of abstract alternatives, and is evaluated by the national court.
- Honest practices are breached where the manner of use misleads consumers into believing an authorization or commercial link exists, exploits the mark’s repute or distinctiveness unfairly, denigrates the mark, or improperly suggests equivalence of quality or properties.
- The limitation is not restricted to “spare parts” or “accessories” and can apply across product categories, including where the user also markets complete products.

## Conclusion

The ECJ interpreted EU trade mark law to permit compatibility references using another’s mark only when such reference is practically necessary to inform consumers and is made without misleading implication of affiliation, unfair advantage, denigration, or improper equivalence claims, leaving the final infringement assessment to the national court.


Gillette Co. v. LA-Labs. Ltd Oy, Case C-228/03, 2005 E.T.M.R. 67 (ECJ 2005)