“Rolex Customisation”
摘要
No legal distinction should be made between the proprietor of a trade mark object who makes his own modifications to the property he has acquired and the owner who uses the services of others to achieve the same result. I.e. there is nothing to prevent a company from offering services aimed at repairing or even modifying trade marks objects for their owners. Thus, the personalisation of a trade mark object, carried out at the request and on behalf of its owner with a view to his personal use, does not in principle infringe the distinctive function of the trade mark, since the modified object is intended for private use and is not placed (back) on the market. The situation is different, however, when a company not only offers personalisation services for trade mark articles to meet the wishes of their owner, but also markets customised trade mark objects without the consent of the proprietor of the trade mark concerned, as the marketing of products modified after they have been put into circulation for the first time, but which continue to bear the trade mark of the original articles, is in principle unlawful. If third parties wish to market a trade mark product that has been modified, they must either obtain the consent of the owner of the trade mark concerned or remove the trade mark from the personalised article. The fact that the trade mark in question may be famous (as here) within the meaning of Art. 15 TMPA does not alter these principles, since the limitations on trade mark rights relating to its use for private purposes also apply to such trade marks.