C-317/91

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OPINION OF MR TESAURO — CASE C-317/91

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DEUTSCHE RENAULT v AUDI

7. In this respect it must be pointed out first, 8. It must however be noted that, if one as a general rule, that according to the case- moves on from statements of a general law of the Court, 2 the derogations envisaged nature to consider the specific results of the case-law, it becomes rather clear that in rec- onciling the requirements of free movement

1 — As may be seen from the fourth recital, the directive docs not deprive the Member States of the right to continue to protect trade marks acquired through use; it deals with such marks only as far as concerns their relationship to trade 3 — Sec the judgment in Case 119/75 Terrapin v Terranova marks acquired by registration obtained according to the ¡1976] ECR 1039. provisions harmonized by the directive. 4 — Sec the judgment in Case 144/81 Keitrkoop v Nancy Kean 2 - See the judgment in Case 251/78 Denkami [1979] ECR 3369. Gifts [1982] ECR 2853.

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OPINION OF MR TESAURO - CASE C-317/91

— the uniform Benelux law which, on the subject of designs, grants an exclusive right to the first person to file a design, As I said, the approach followed on the sub- but without requiring that he should be ject of industrial and commercial property the originator of the design or should rights seems different and more timid. More have obtained a licence from him (judg- specifically it may be seen from the case-law ment in Keurkoop); that Articles 30 and 36 prevent only an obvi- ous misuse of the rights in question. The principal circumstances in which that occurs are the well-known cases in which the pro- prietor of such rights uses the protection — British legislation which, on the basis of granted him by national rules to oppose the the principle of 'relative novelty', allows importation or marketing of a product law- the grant of a patent for inventions which fully marketed in another Member State by, have already been the subject of a previ- or with the consent of, the proprietor him- ous patent filed more than 50 years pre- self or a person legally or economically viously and not subsequently used or dependent on him. published (judgment in Thetford);

— Italian and British legislation which rec- and not to the provisions of the Treaty on ognize an exclusive right in an ornamen- free movement of goods that reference must tal design in respect not only of the be made to determine whether, in a specific whole bodywork of a motorcar but also case, a given designation shows all the fea- of the individual bodywork components, tures necessary to enjoy legal protection of thus preventing the marketing of spare the trade mark. I therefore think that Arti- parts by unauthorized independent man- cles 30 and 36 of the Treaty do not prevent ufacturers (judgments in CICRA and application of the national rules and criteria Volvo). at issue and that consequently the provision of legal protection for the designation 'Quat- tro' in Germany is a contingency which must be assessed by the competent authori- ties exclusively in the light of those rules and criteria. 11. I do not see any reason why that line of case-law should not be followed in this case also. As has been seen, the possibility of cre- ating a right to a trade mark (by registration or use) as regards a numerical symbol, such as the designation 'Quattro', is laid down in detail by German legislation. Moreover in applying that legislation the German author- 12. On the other hand, if a different ities have worked out precise interpretative approach were adopted the Court would criteria intended to guarantee that protection inevitably be called upon to define positively shall not be granted to designations devoid a system of case-law on trade marks, by of any distinctive character and thus inap- deducing from Articles 30 and 36 the specific propriate for performing the proper function rules which the national authorities must of the mark. That legislation and the inter- apply to determine, in individual cases, pretative criteria relating to it thus govern whether or not to grant protection to a given fully the requirements and arrangements for distinctive designation. In other words, the the grant of the right in question, laying Court would be taking on a clear rule- down a somewhat cohesive system which making rôle which so far, in subiecta mate- makes it possible to define whether and ria, it has always regarded as the exclusive within what limits a numerical sign may be prerogative of the legislature (national or the subject of a trade mark, the importance Community). of the 'descriptive' nature of the designation, the level of recognition required (according to the various circumstances) to justify acknowledging a right to legal protection and finally the importance of the interests of competitors, and of third persons in general, in a free use of the designation in question. 13. Moreover, that conclusion does not seem to me to be invalidated by the fact that the Council has adopted the first harmonization directive on trade marks laying down inter alia the requirements which a designation must meet in order to obtain registration It may be seen clearly from the case-law (though the directive, as I have said, leaves already mentioned that it is to those rules untouched the right of Member States to

The Treaty rules on movement of goods and 14. However, one reservation must be added appraisal of the risk of confusion between to the solution suggested here. If the creation trade marks (and more generally the maintenance and extinction) of the rights in question is gov­ erned by the national legal order, the prerog­ ative allowed to Member States in that respect must not in any case be exercised in such a way as to bring about 'disguised restrictions' or 'arbitrary discrimination' in 16. A second aspect has been discussed in trade within the meaning of the second sen­ the context of these proceedings. The ques­ tence of Article 36. It must however be tion has been raised whether, once it has pointed out that, in the application envisaged been established that the national legal order in the case-law, the specific scope of that res­ and the Community legal order make it pos­ ervation — which constitutes, as it were, a sible to recognize a right to a trade mark in kind of minimum safeguard clause — does the designation 'Quattro', the 'risk of confu­ not go beyond extreme cases (almost classic sion' between that trade mark and the trade cases) such as that of an application of the mark 'Quadra' must then be appraised national provisions giving rise to discrimi­ exclusively by criteria based on national law nation on grounds of nationality against the or by criteria based on Articles 30 and 36 of traders concerned or of the place where the the Treaty. It seems to me appropriate to industrial or commercial property right aris­ make a few preliminary observations on the es; 6 it would be possible at the most to add matter. to those cases that of a right to a trade mark granted to a designation manifestly devoid of any distinctive character (such as the exam­ ple, mentioned at the hearing, of legal pro­ tection granted to the generic designation 'earth' or 'water'). 17. First of all I would mention that the dis­ pute concerns a clash between distinct trade marks 'Quattro' and 'Quadra', validly estab­ 6 — Sec the judgments in Thetford, previously cited, paragraphs lished in two different Member States by 17 and 18 of the grounds of judgment; and in CĪCRA, pre­ viously cited, paragraph 12 of the grounds of judgment. undertakings independent of one another.

Moreover, even though it was not expressly raised by the BGH, the question of the pos- sibility of confusion was fully discussed before the Court and it may well in any case 18. Moreover it seems to me appropriate to have a certain importance for the purposes of call the Court's attention to the fact that the the solution to the dispute in the main pro- question from the BGH does not contain ceedings. I think therefore that the Court any specific reference to the problem of the cannot avoid replying on this point. possibility of confusion between the marks at issue. The question, as is also clear from the order as a whole, concentrates in fact on 19. Having said that, I think the following the possibility that the Treaty may prevent considerations may be pursued. First of all, it the establishment of a trade mark relating to is clear that the power of the proprietor of a the designation 'Quattro'. On the other trade mark to oppose the use by competitors hand, the BGH does not expressly ask the of similar or identical marks constitutes the Court whether, in the event of there being essential content of the right to the trade no objection to recognition of the mark mark. In fact that right, when it becomes 'Quattro', the Treaty imposes yet other lim- operative, that is, at the stage when it is exer- its on the appraisal of the possibility of con- cised, represents nothing other than an abso- fusion between that mark and the trade mark lute right of exclusivity, a jus excludendi 'Quadra'. The reason is probably this: the omnes alios. In this respect the provisions of BGH starts from the idea that in any case Article 5 of the first directive are clear: 'The the trade mark 'Quattro' may be protected registered trade mark shall confer on the by German law only on condition that it is proprietor exclusive rights therein'. And the demonstrated that it has become extremely case-law is just as clear, stating, in the Terra- well known among the public, the consum- pin judgment: 'in the present state of Com- ers, as a distinctive designation of a given munity law an industrial or commercial product; but if that is demonstrated, then it property right legally acquired in a Member must be considered that the trade mark State may legally be used to prevent under 'Quattro', precisely because it is widely the first sentence of Article 36 of the Treaty known, enjoys a high degree of protection as the import of products marketed under a against any other trade mark which, even with more or less obvious variations, may in any case be regarded as connected with the same designation. From that point of view, 7 — The fact that that is the point of view adopted by the BGH seems to be confirmed by the opinion annexed to AUDI's namely that of the protection of trade marks observations, in which it is stated that '1c Bundesgerichtshof confirme qu'en toute hypothèse, si on part de l'idée que le which are very well known, even a slight risk terme "Quattro" a une valeur forte comme marque, il faut répondre par l'affirmative à la question de savoir s'il y a un of confusion may in fact be sufficient to risque de confusion avec "Quadra"'.

name giving rise to confusion where the trade marks which may be expected within rights in question have been acquired by dif- the Community (actually several hundred ferent and independent proprietors under thousand according to the estimate given in different national laws. If in such a case the Advocate General Jacobs's Opinion in the principle of the free movement of goods HAG II case). were to prevail over the protection given by the respective national laws, the specific objective of industrial and commercial prop- erty rights would be undermined.' On the same lines, in the HAG II judgment, 8 the Court stressed that protection against the risk of confusion is linked to the essential function of the trade mark, and stated that The question therefore arises whether the that 'would be jeopardized if the proprietor appraisal of the risk of confusion must be of the trade mark could not exercise the right made exclusively on the basis of the criteria conferred on him by national legislation to derived from the national legal order or oppose the importation of similar goods whether common criteria may be derived bearing a designation liable to be confused from Articles 30 and 36 of the Treaty. with his own trade mark, because, in such a situation, consumers would no longer be able to identify for certain the origin of the marked goods and the proprietor of the trade mark could be held responsible for the poor quality of goods for which he was in no way accountable.' 21. I do not think that, in principle, the con- cept of risk of confusion can, prior to the entry into force of the first directive on trade marks, be regarded as a Community concept. It is therefore not for the Court to give a positive definition of the features of such a concept or the relevant criteria for its appli- cation. Moreover, as I have said, protection 20. That having been said, it is also obvious against the risk of confusion constitutes the that the higher the level of protection essential content of the right to a trade mark granted by a Member State as regards the and there would therefore be no point in risk of confusion, the stricter are the trade claiming, on the one hand, that, in the restrictions which may result, both within absence of Community rules, the conditions the Community and in the individual Mem- (for the acquisition) of the right are governed ber State in question. And it goes without by the internal legal order whilst claiming, saying that that very aspect has a significant on the other hand, that the conditions for the practical importance for the operation of the protection of the right are governed, in con- internal market in view of the certainly very trast, by the provisions of the Treaty. The high number of cases of clashes between right to a trade mark, as an exclusive right, and protection against symbols which may be confused with it are substantially two sides of the same coin: to reduce (or extend) 8 — Sec the judgment in Case C-10/89 HAG GF AG [1990] ECR the scope of the protection against the risk of 1-3711.

confusion means nothing other than to Kingdom, where both marks exist side by reduce (or extend) the scope of the right side and have been validly registered. On the itself. Both aspects must accordingly be gov- other hand, account must also be taken of erned by a single, homogeneous source the fact that frequently the greatest strictness which, at present, is the internal legal order. in protecting the mark from the risk of con- fusion may be the counterpart of greater strictness in recognizing the right to the mark: thus, although it is true that the Ger- man courts do not seem to have any hesita-

24. There is still one last aspect to be stressed, namely that in appraising the risk of confusion between two trade marks the national authorities will in any case have to 23. As regards the possibility that clashes observe the general limit laid down by the between trade marks may receive different second sentence of Article 36. The measures treatment in the various Member States, that adopted to resolve clashes between trade is an altogether natural consequence of the marks must never therefore give rise to 'arbi- absence of harmonization. It is even obvious trary discrimination' or a 'disguised restric- that in such a situation it may happen that in tion' on trade between Member States.

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Treaty. It is for the court of first instance, between two distinct marks. Such situations after considering the similarity of the prod- may in fact arise when, regard being had ucts and the risk of confusion, to enquire to the characteristics of the products and further in the context of this last provision of the market as well as to the different whether the exercise in a particular case of signs and designations distinguishing the industrial and commercial property rights products in question it becomes clear that may or may not constitute a means of arbi- there is no possibility of confusing the iden- trary discrimination or a disguised restriction on trade between Member States. It is for the tity of the origin of the products and that national court in this respect to ascertain in there is no undertaking which, by using a particular whether the rights in question are given distinctive symbol, is taking advantage in fact exercised with the proprietor with the of the fact that the other trade mark is well same strictness whatever the national origin known or injuring its reputation.

Moreover the national court will certainly not fail to consider that the con- sumer of well-known motor-cars is much more aware and consequently less exposed to the risk of confusion (in both the strict and in the broad sense) than the consumer of 25. In particular, in applying the reservation referred to in the second sentence of Article 36, account must be taken of the need 9 — In his Opinion — in paragraphs 48 and 49 — Advocate Gen- to avoid the exercise of the right recognized eral Jacobs emphasizes that an unduly broad view of the by the national legal system in respect of a concept of confusingly similar marks — apart from not being justified in that case within the meaning of the first given proprietor from giving rise to quite sentence of Article 36 — would run counter to the second sentence of that decision, since 'reliance on a trade mark in unjustified restrictions on trade. From that order to exclude goods manufactured in another Member point of view — already emphasized in State where the risk of confusion between the two marks is minimal would amount, if allowed by national courts, to a the Opinion of Advocate General Jacobs disguised restriction on trade between Member States'.

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