C-251/95

SABEL v PUMA

OPINION OF ADVOCATE GENERAL JACOBS delivered o n 29 April 1997 *

1. In the present case, the Bundesgerichtshof 3. The mark in issue comprises a spotted (Federal Court of Justice, Germany) seeks feline beast of prey, to judge by its appear- guidance on the interpretation of the notion ance a cheetah, bounding (i. e. running) of 'confusion' between trade marks under towards the right of the picture, together Article 4(1 )(b) of the First Council Directive with the name SABEL written underneath: to approximate the laws of the Member States relating to trade marks (the 'Trade Marks Directive', or simply 'the Direc- tive'). ' It is the first occasion upon which the Court has been asked to interpret that notion under the Directive, 2 although it has previously addressed the issue of confusion to a limited extent in the light of Articles 30 and 36 of the Treaty. 3

Facts and national procedure SABEL has applied to register that trade mark in the following classes of goods:

2. The Netherlands proprietor of IR mark 540 894, SABEL BV, has applied to '14. Articles of jewellery, including ear-rings, register it in the Federal Republic of Ger- chains, brooches and pins. many. 4

4. Puma Aktiengesellschaft Rudolf Dassler Sport ('Puma'), the owner of two earlier pic- torial marks, lodged oppositions to SABEL's applications. Its mark number 1 106 066 is similarly a pictorial representation of a feline beast of prey bounding towards the right of the picture but, unlike SABEL's mark, the beast is depicted as a silhouette and is pre- sumably intended to be a puma rather than a cheetah; I shall refer to this as the bounding puma mark.

6. The examining authority for IR class 18 in the German Patent Office decided that there was no similarity for trade-mark law pur- poses between SABEL's mark and Puma's marks, and rejected the oppositions lodged by Puma. Puma appealed to the Bundespat- entgericht (Federal Patent Court). That appeal was rejected in so far as the opposi- tions were based on the leaping puma mark. The oppositions based on the bounding puma mark were upheld in part. The Bundespatentgericht held that there was a similarity for trade-mark law purposes between SABEL's mark and the bounding puma mark with respect to the goods That mark is registered, inter alia, for leather claimed in classes 18 and 25, which it and imitation leather, goods made therefrom regarded as identical or similar to goods in (bags) and articles of clothing. respect of which the bounding puma mark

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was registered. SABEL appealed to the Overall impression Bundesgerichtshof against that partial refusal of protection of its mark in the Federal Republic of Germany.

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distinguished. However, the Bundesgericht- depiction as a silhouette, the repetition of shof stresses that the question whether an which might establish similarity for trade- earlier sign has special 'characterizing force' mark law purposes, do not occur in the does not arise in the present case because no SABEL mark. It concludes that the similarity submission has been made on that point. By of signification between the pictorial compo- that it presumably means that it has not been nent of the SABEL mark and the Puma argued that Puma's bounding beast mark is mark, as a 'bounding feline beast of prey', particularly well known, or that a bounding cannot therefore be adduced as grounds for a puma is an invented image. risk of confusion for trade-mark law pur- poses.

Descriptive signs

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which the risk of confusion includes the 18. The tenth recital states: likelihood that a mark may be associated with an earlier mark?'

'Whereas the protection afforded by the reg- 15. Observations have been submitted by istered trade mark, the function of which is Puma, the French, Dutch and United King- in particular to guarantee the trade mark as dom Governments and the Commission. In an indication of origin, is absolute in the case addition, SABEL, the Belgian, French, of identity between the mark and the sign Luxembourg and United Kingdom Govern- and goods or services; whereas the protec- ments and the Commission were represented tion applies also in case of similarity between at the oral hearing. the mark and the sign and the goods or ser- vices; whereas it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; whereas the likelihood of confusion, the appreciation of which depends on numerous The provisions of the Directive elements and, in particular, on the recogni- tion of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified, 16. The Trade Marks Directive was adopted constitutes the specific condition for such under Article 100a of the Treaty. Its aim was protection; whereas the ways in which likeli- not 'to undertake full-scale approximation of hood of confusion may be established, and in the trade-mark laws of the Member States' particular the onus of proof, are a matter for but simply to approximate 'those national national procedural rules which are not provisions of law which most directly affect prejudiced by the Directive'. the functioning of the internal market' (third recital).

(b) if because of its identity with, or similar- 21. Article 2 of the Directive provides that: ity to, the earlier trade mark and the identity or similarity of the goods or ser- vices covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.'

'A trade mark may consist of any sign capable of being represented graphically, par- ticularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of 23. 'Earlier trade marks' are defined in other undertakings.' Article 4(2).

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24. Artide 4(3) provides that: 26. Article 5 specifies the rights conferred by a trade mark:

'1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

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tage of, or is detrimental to, the distinctive 28. Article 8 of the Regulation provides that: character or the repute of the trade mark.

' 1 . Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are 5. Paragraphs 1 to 4 shall not affect provi- identical with the goods or services for sions in any Member State relating to the which the earlier trade mark is protected; protection against the use of a sign other than for the purposes of distinguishing goods or services, •where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.' (b) if because of its identity with or similar- ity to the earlier trade mark and the identity or similarity of the goods or ser- vices covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the 27. Provisions virtually identical to those in likelihood of association with the earlier Articles 4(1) and 5(1) appear in Council trade mark. Regulation (EC) N o 40/94 of 20 December 1993 on the Community trade mark ('the Community Trade Mark Regulation' or sim- ply 'the Regulation'). 6 The purpose of that Regulation is to make it possible to apply for a single 'Community trade mark' which is valid throughout the Community. 7 Applica- tions are to be made to the Community Trade Mark Office ('the Office'). 8

identical with or similar to the earlier trade Previous case-law mark and is to be registered for goods or ser- vices which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an ear- lier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the dis- tinctive character or the repute of the earlier 31. As I mentioned by way of introduction, trade mark.' this Court has previously addressed the issue of confusion for trade-mark law purposes in the light of Articles 30 and 36 of the Treaty before the Trade Marks Directive took effect. That confusion between trade marks is in principle a justifiable reason for opposing the import of goods was first established in Ter- rapin v Terranova 9 and confirmed in 'Hag II',10 Renault v Audi" and Ideal Stan- dard. 12 In Renault v Audi the Court recalled that the specific subject-matter of trade-mark rights consists in protecting the proprietor of the mark against a risk of confusion such as 29. 'Earlier trade marks' are defined in to allow third persons to take unlawful Article 8(2). advantage of the reputation of the propri- etor's goods. The Court considered that the criteria for establishing whether there was a risk of confusion formed part of the detailed rules of trade-mark protection which were at that time a matter for national law, subject to the second sentence of Article 36; and that Community law did not lay down any strict interpretative criterion for the concept of the risk of confusion. Those comments were quoted later in Ideal Standard, in which the Court emphasized (at paragraph 19) the sec- ond sentence of Article 36, in particular as 30. Article 52(1) provides that a Community prohibiting national courts from assessing trade mark shall be declared invalid on appli- cation to the Office or on the basis of a counterclaim in infringement proceedings, 9 — Case 119/75 [1976] ECR 1039. inter alia, 'where there is an earlier trade 10 — Case C-10/89 HAG GF [1990] ECR 1-3711. mark as referred to in Article 8(2) and the 11 — Case C-317/91 Deutsche Renault v Audi [1993] ECR conditions set out in paragraph 1 or 5 of that 1-6227. 12 — Case C-9/93 IHT Internationale Heiztechnik v Ideal Stan- Article are fulfilled'. dard [1994] ECR 1-2789.

the similarity of products in such a way as to trade mark by selling products bearing it ille- give rise to arbitrary discrimination or a dis- gally'. , 5 Moreover, in recognizing in Bristol guised restriction on trade between Member Myers-Squibb 16 the right of a trade-mark States. Although those cases were answered owner to oppose defective, poor quality, or in terms of the position before the Trade untidy repackaging, which might damage his Marks Directive took effect, they may, as I reputation, the Court arguably recognized shall discuss later, be of some assistance in that trade-mark law can protect interests considering the present case. other than simply the right to ensure that there is no confusion as to the origin of a product. (That issue is considered in my Opinion in Dior v Evora.) 17 None the less the emphasis generally placed by the Court on confusion may be of significance, even in interpreting the Directive.

tively. In Hoffmann-La Roche v Centra- 33. The Bundesgerichtshof considers that farm, 13 for example, it referred to the guar- the difficulty in this case is whether the antee of the identity of the origin of the purely associative train of thought by which trade-marked product as being the 'essential' the public connects the two signs via the function of a trade mark. (That wording is image of a 'bounding feline beast of prey' is reflected in the tenth recital to the Directive, sufficient to justify refusing protection to IR according to which the purpose of trade- trade mark 540 894 in the Federal Republic mark protection is 'in particular' to guaran- of Germany for the identical goods in tee the origin function of the mark.) u The class 18 and the goods in class 25 which the Court has also, as I have mentioned, Federal Patent Court considers to be similar. described the 'specific subject-matter' of a That difficulty is occasioned in particular, trade mark as being 'in particular to guaran- according to the Bundesgerichtshof, by the tee to the owner that he has the exclusive right to use that trade mark for the purpose of putting a product on the market for the 15 — See, for example, Hoffmann-La Roche v Centrafarm, cited first time and therefore to protect him in note 13, and the judgments of 12 July 1996 in Joined against competitors wishing to take advan- Cases C-427/93, C-429/93 and C-436/93 Bristol Myers- Squibb v Paranova and Bayer Aktiengesellschaft, Bayer tage of the status and reputation of the Denmark v Paranova [1996] ECR 1-3457, Joined Cases C-71/94, C-72/94 and C-73/94 Eurim-Pharm Arzneimittel v Beiersdorf, Boehringer Ingelheim KG, Boehringer Ingel- heim A/S and Farmitalita Carlo Erba [1996] ECR 1-3603, and Case C-232/94 MPA Pharma v Rhône-Poulenc Pharma [1996] ECR 1-3671. 13 — Case 102/77 [1978] ECR 1139. 16 — Cited in note 15. 14 — Sec paragraph 18 above.

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unclear choice of words in Article 4(1 )(b) of countries, on the one hand, and most other the Trade Marks Directive, according to Member States, on the other. It is common which the risk of confusion includes the like- ground that the references in the Directive t o lihood of the mark being associated with the 'likelihood of association' are inspired by earlier trade mark. Benelux law. Under the Uniform Benelux Law on trade marks ('the Benelux Law'), 1 8 in any event prior to implementation of the Directive, the owner of a trade mark could prevent any use of a mark identical or similar to his own registered mark in respect of the same or similar goods. , 9 Similarity of the marks was thus sufficient; in contrast to the position in other Member States, the Benelux Law did not require a risk of confusion. N o r 34. I shall accordingly deal first with the sec- did it expressly refer to a likelihood of asso- ond part of the Bundesgerichtshofs ques- ciation. That concept was introduced by the tion, which raises the general issue of the Benelux Court in the 'Union/Union Soleure' * meaning of Article 4(l)(b) of the Trade case in 1983. 2° The Benelux Court held that Marks Directive in so far as it refers to 'a there was similarity between a mark and a likelihood of confusion on the part of the sign when, taking account of the particular public, which includes the likelihood of asso- circumstances of the case including the dis- ciation with the earlier mark'. That will assist tinctive power of the mark, the mark and the in considering the first part of the question, sign, considered in themselves and in their which is in substance whether a finding of reciprocal relations, present on an auditory, confusion can be based upon the fact that the visual, or conceptual level, a similarity such same idea is conveyed by two pictorial as to establish an association between the marks (one also including text). sign and the mark. The Benelux Court did not follow the Opinion of its Advocate Gen- eral who considered that there should be confusion as to the origin of the product.

A protocol of 2 December 1992 (which confusion about the origin of the products. entered into force on 1 January 1996) It appears that Benelux law does go further amended Article 13A(1) of the Benelux Law than the trade-mark laws of other Member to provide that the exclusive right of a trade States because it protects trade-mark owners mark entitles the proprietor to oppose any against the use of identical or similar signs in commercial use of the mark or a similar sign circumstances in which the consumer is in in respect of the products for which the no way confused as to the origin of the mark is registered or similar products, when product and so provides protection also there exists, in the mind of the public, a 'risk against harm caused by virtue of what is of association' between the sign and the known as degradation and dilution of trade mark. marks. Those concepts are well illustrated by the case in the Benelux Court of Claeryn and Klarein, 21 which was referred to by the Netherlands, Belgian and Luxembourg Gov- ernments. Under the second indent of Article 13 A. 1 of the Benelux Law, in the version in force at the time, a trade-mark 37. The gap between the Benelux Law and owner was entitled to oppose any use of the the laws of the other Member States may not mark or a similar sign in circumstances however have been as wide as it may appear. which, in the field of commerce and without Indeed, according to the United Kingdom due cause, were liable to cause harm to the Government, there is in practice little differ- mark. The case concerned the mark ence between the Benelux concept of asso- 'Claeryn' for a Dutch gin and 'Klarein' for a ciation and the concept of confusion in the liquid cleaning agent, which are apparently other Member States since the latter is inter- pronounced identically in the Dutch lan- preted very broadly. guage.

different situations: when the blurring of the because one mark was the reverse, indeed the distinctiveness of the mark means that it is negation, of the other — although it appears no longer capable of arousing immediate that in the Dutch proceedings on the subject association with the goods for which it is the court actually found on the evidence that registered and used (which is presumably a significant portion of the public would be what is meant by the concept of 'dilution' of confused between the two. 24 trade marks); or when the goods for which the infringing mark is used appeal to the public's senses in such a way that the trade mark's power of attraction is affected (which is presumably what is meant by the 'degra- dation' of trade marks). Since it was consid- ered that the similarity between the two marks might cause consumers to think of a 41. Thus it appears that, under the Benelux cleaning agent when drinking 'Claeryn' gin, concept of 'association', a trade-mark owner the 'Klarein' mark was held to infringe the has the right to oppose the use of signs 'Claeryn' mark, even though there was con- which 'bring to mind' his mark, even if there sidered to be no risk that consumers would is no risk of the consumer thinking that the think that the products came from the same product bearing the competing sign is in any or connected companies. I shall refer hence- way connected with the trade-mark owner. forth to the type of association which does not involve any confusion relating to origin as 'non-origin association'. a

Negotiating history of the Directive

Commission note that "likelihood of asso- advanced in the observations of the French ciation" is a concept which in particular has and United Kingdom Governments. How- been developed by Benelux case-law'. An ever, even if regard could be had to the his- article by two members of the Benelux del- tory of the negotiations and the statement egation involved in negotiating the allegedly included in the Council minutes, it Directive M describes the discussions which seems to me that the information they reveal took place concerning the use of the word is at best ambiguous. So far as the alleged 'association'. Towards the end of that article statement is concerned, I do not think it is they state: permissible to rely upon it; 26 but the content of that statement is in any event uncontro- versial. What is disputed is the precise effect of the reference in the Directive to the likeli- hood of association; and on that point the statement is of no assistance. So far as the history of the negotiations is concerned, it is significant that that history was relied upon 'Initially the Netherlands had attempted to in argument before this Court both by those lay down the text of Article 13A(1) of the in favour of a broad interpretation of the Benelux Trade Mark Act as such in an concept of association for the purposes of optional stipulation. As that did not work the Directive and by those in favour of a nar- out, attempts were made to have the concept row interpretation, to opposite effect. I con- of the "risk of association" as developed by clude that these matters are of no assistance the Benelux Court accepted as an alternative in interpreting the Directive. to "the risk of confusion". When no support was gained for the latter option either, the Benelux countries finally, in view of the final version of the legal preamble and the decla- ration in the Council Minutes, ... and also in view of the results already attained with other items, accepted the final proposal of The terms of the Directive compromise by the other countries for Article 3 section 1 sub b) of the Draft Direc- tive: ... "a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."'

Anicie 4(l)(b) and Artide 5(1 )(b) state that function of the mark. N o other purpose is the likelihood of confusion 'includes' the mentioned. It can perhaps reasonably be likelihood of association, not vice versa. inferred that protection against the likeli- What is thus clear is that even if, under hood of confusion as to origin is a useful Benelux law, the concept of association can tool of interpretation when assessing the stretch further than cases involving direct or rules relating to the registrability of a mark. indirect confusion, it cannot do so for the purposes of the Directive. The Benelux countries have not sought to argue that non- origin association amounts to confusion, simply that it has been brought within the Directive. But it is difficult to see how asso- ciation not involving confusion can be brought within the Directive when the Directive requires a likelihood of confusion which includes the likelihood of association. As Mr Justice Laddie neady expressed the point in Wagamama, an English case on this 46. Furthermore, it appears to have been very issue: it would be 'unconventional use only the Benelux countries which, before the of language to provide that the smaller introduction of the Directive, embraced the (i. e. likelihood of confusion) includes the concept of non-origin association for the larger (i. e. likelihood of association)'. 27 purposes of their trade-mark law. To have included that concept within the Directive would accordingly have been a major step. Mr Justice Laddie put the point very forcibly in Wagamama, commenting that, since it would have significantly extended trade- mark rights and would thereby have signifi- cantly restricted the freedom of traders to compete, it would be expected that any such expansion would 'have been stated in clear and unambiguous words so that traders 45. The wording of the preamble is to the throughout the European Union would be same effect. The tenth recital, already able to appreciate that their legislators had quoted, 28 states that the likelihood of confu- created a new broad monopoly'. Since most sion 'constitutes the specific condition' for Member States appear not to have embraced the protection afforded by the mark, and the concept of non-origin association for the appears to suggest that association is one of a purposes of their trade-mark law and since number of elements to be taken into account adoption of that concept would militate in assessing the likelihood of confusion. against free trade, I agree that, in the absence Moreover, as mentioned already, that same of clear wording to that effect, the Commu- recital reflects the Court's case-law by stat- nity legislature cannot be assumed to have ing that the purpose of trade-mark protec- intended to embrace such a concept. More- tion is in particular to guarantee the origin over it would also have departed signifi- cantly from the case-law of the Court on Articles 30 and 36 of the Treaty which, as has been seen, is essentially based on the 27 — Cited in note 22, at p. 723. 28 — Paragraph 18 above. notion of confusion. Again clearer wording

48. It has also been argued that other provi- sions of the Directive protect trade marks, under certain conditions, without a require- ment of confusion even where the goods are not similar, and that therefore a requirement 49. It is true that Article 4(4)(a) applies only of confusion cannot be intended where the where the goods are dissimilar. But it cannot goods are similar. The argument is not con- be inferred that, if confusion is not necessary vincing, because the situation covered by the in the case of dissimilar goods, it cannot be other provisions is sufficiently different to necessary in the case of similar goods under explain the absence of an express require- Article 4(1 )(b). As the United Kingdom ment of confusion. The situation is one points out, the reason why Article 4(4)(a) where the earlier mark 'has a reputation in applies only where goods are dissimilar is no the Member State concerned 2 9 and where doubt that, where goods are similar to goods covered by a mark with a reputation, it is difficult to imagine a situation in which there will be no likelihood of confusion. A pos- 29 — Or, in the case of a Community trade mark, a reputation in the Community: Article 4(3). sible example that has been suggested is the

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'Anti-Monopoly' case already referred to: internal market, to approximate the laws of there it is said that the owner of the mark Member States'. The Commission concludes, 'Monopoly' 'was allowed to oppose the use with good reason in my view, that those of the sign 'Anti-Monopoly' although, given objectives militate against an extensive inter- the deliberate contrast between the marks, pretation of the likelihood of confusion there was no likelihood of confusion. Even which would lead to unjustified restrictions in that case, however, there was, as men- on the free flow of goods and services. tioned above, evidence of a likelihood of confusion.

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mark under the Community Trade Mark Convention', 32 that Convention makes Regulation, 30 which, as mentioned above, express reference only to confusion. contains provisions relating to confusion Article 10 bis 3(1), relating to unfair compe- between marks which are virtually identical tition, imposes the duty to prohibit, inter to those in the Directive. It is clearly appro- alia, 'all acts of such a nature as to create priate that the provisions of the Directive confusion by any means whatever with the should be interpreted in the same way as the establishment, the goods, or the industrial or corresponding provisions of the Regulation. commercial activities, of a competitor'. 33 A Community mark can be granted only in Furthermore, Article 6 bis, relating to well- respect of the whole of the territory of the known marks, provides that countries of the Community and thus a conflict with just one Union undertake 'to refuse or to cancel the mark in one country suffices to prevent reg- registration, and to prohibit the use, of a istration of a mark as a Community mark. trade mark which constitutes a reproduction, An application to register a mark may be an imitation, or a translation, liable to create opposed on the basis of an existing Commu- confusion, of a mark considered by the com- nity mark, a mark registered in any Member petent authority of the country of registra- State, or, in certain circumstances, an unreg- tion or use to be well known in that country istered right recognized in a Member State. 3I ... and used for identical or similar good- Too broad a protection for trade-marks on s. These provisions shall also apply when the the basis of a risk of 'association' with other essential part of the mark constitutes a marks would accordingly make it very diffi- reproduction of any such well-known mark cult for many marks to be registered at or an imitation liable to create confusion Community level. If the Community trade- therewith.' 34 mark system is to function effectively, and if applications are not to be swamped by oppo- sition proceedings, it seems essential that marks should be registrable in the absence of a genuine and properly substantiated risk of confusion.

Rights ('TRIPS') 3 5 similarly provides that word 'association' in Article 4(1 )(b) of the 'The owner of a registered trademark shall Trade Marks Directive does not mean that have the exclusive right to prevent all third the registration of a mark can be opposed parties not having the owner's consent from merely on the ground that, because the idea using in the course of trade identical or simi- behind it and another mark is the same, there lar signs for goods or services which are is a risk that the public will associate the t w o identical or similar to those in respect of marks in the sense that one will simply bring which the trademark is registered where such the other to mind without any likelihood of use would result in a likelihood of confusion. the consumer being confused. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed ...' 3 6 There is therefore no inconsistency between the Directive on the view I take and those inter- national instruments.

57. I turn now to the first part of the ques- tion referred. The Bundesgerichtshof seeks to establish whether it is sufficient for a find- ing of a risk of confusion that two marks, 55. Taking account of the language, the pur- one composed of a text and a picture and pose and the context of the Directive, there- one consisting merely of a picture, which are fore, I consider that, while the likelihood of used or registered in respect of identical and association with an earlier mark is a factor to similar goods, convey the same idea (in the be taken into account, registration of a mark present case, a bounding feline beast of cannot be opposed unless it is established prey). It specifies that the registered mark is that there is a genuine and properly substan- not 'especially well known to the public'. tiated likelihood of confusion about the ori- gin of the goods or services in question.

59. First, the question is posed on the basis circumstances in which, even if the registered that one mark includes a text, in addition to mark is not well known and even if the two a picture, whereas the other does not, and images are drawn as differently as possible, the Bundesgerichtshof has explained that, in the public might nevertheless confuse the its view, that fact does not in itself prevent two marks. For example, a trade mark might there being a similarity between the two consist of an unusual invented image, or an marks for trade-mark law purposes since it is unusual combination of natural images, such the overall impression conveyed by each sign as, respectively, a puma playing a violin or a which counts. The application of the prin- puma grouped with a snake and a bird. I do ciple that regard must be had to the overall not consider it unreasonable for such marks impression conveyed by trade marks appears to be protected under trade-mark law against to be common amongst Member States; reproductions of the concept which they indeed that principle is perhaps self-evident. convey, however differently the competing Given that the essential criterion is the likeli- marks might be drawn. hood of confusion, the Bundesgerichtshof must be correct in considering that what is important is the overall impression conveyed by the mark. It follows that the inclusion of a textual element in one of two pictorial marks does not in itself suffice to preclude a finding that there is a likelihood of confusion arising from the similarity of the two marks. Whether, in a particular case, the inclusion of text in one mark is sufficient to avoid the likelihood of confusion arising from the similarity of the pictorial elements of the two marks is essentially a question of fact for the national court.

Conclusion

64. I am accordingly of the opinion that the question referred by the Bundesge- richtshof should be answered as follows:

(1) Article 4(l)(b) of the First Council Directive of 21 December 1988 to approxi- mate the laws of the Member States relating to trade marks must be inter- preted as meaning that, while the likelihood of association with an earlier mark is a factor to be taken into account, registration of a mark cannot be opposed unless it is established that there is a genuine and properly substanti- ated likelihood of confusion about the origin of the goods or services in ques- tion.

(2) The registration of a mark cannot be opposed merely on the ground that, because the idea behind it and another mark is the same, there is a risk that the public will associate the two marks in the sense that one will simply bring the other to mind without a likelihood of confusion as described above.

(3) Where there is a similarity between two pictorial marks, one of which includes a text, the inclusion of a textual element in one of the marks does not in itself suffice to preclude a finding that there is a likelihood of confusion as described above.

(4) The registration of a trade mark may be opposed on the basis that the ideas conveyed by the pictorial elements of two trade marks are similar, provided that it is established that there is a likelihood of confusion as described above.