C-39/97

I-5510

CANON KABUSHIKI KAISHA v METRO-GOLDWYN-MAYER

6. Article 4(1) of the Directive, which con- proprietor shall be entitled to prevent all third cerns the ability to register a mark, provides parties not having his consent from using in that: the course of trade:

'A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is pro- tected;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and (b) if because of its identity with, or simi- the sign, there exists a likelihood of con- larity to, the earlier trade mark and the fusion on the part of the public, which identity or similarity of the goods or ser- includes the likelihood of association vices covered by the trade marks, there between the sign and the trade mark.' exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.'

7. Similarly, Article 5(1), which specifies the rights conferred by a trade mark, provides that: 8. Marks with a reputation can benefit from yet further protection. Article 4(4)(a) gives Member States the option of refusing the reg- istration of a mark in certain circumstances if the mark is similar or identical to an earlier national mark which has a reputation, even 'The registered trade mark shall confer on the though the goods or services in respect of proprietor exclusive rights therein. The which the later mark's application is made are

(a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, 'Any Member State may also provide that the or has been, registered for goods or ser- proprietor shall be entitled to prevent all third vices which are not similar to those for parties not having his consent from using in which the earlier trade mark is registered, the course of trade any sign which is identical where the earlier trade mark has a reputa- with, or similar to, the trade mark in relation tion in the Member State concerned and to goods or services which are not similar to where the use of the later trade mark those for which the trade mark is registered, without due cause would take unfair where the latter has a reputation in the Member advantage of, or be detrimental to, the State and where use of that sign without due distinctive character or repute of the ear- cause takes unfair advantage of, or is detri- lier trade mark.' mental to, the distinctive character or the repute of the trade mark.'

9. Where the earlier mark is a Community 11. It should, however, be noted that, although trade mark provided for by the Community the question refers to marks with a reputa- Trade Mark Regulation, 3 Article 4(3) of the tion and Articles 4(4)(a) and 5(2) mention Directive allows for the same type of objec- such marks specifically, the Bundesgericht- tion to registration to be made by the owner shof has made it clear that the provision in of an earlier Community trade mark which question in the present case is Article 4(1 )(b) for the reasons explained below. 4

15. According to the Bundesgerichtshof, it must be assumed for the purposes of legal assessment that the two marks ' C A N N O N ' and 'Canon' sound identical. They are not, however, applied in respect of identical goods 13. That application was opposed by Canon and services. The question with which the Kabushiki Kaisha ('CKK') on the grounds German courts have been confronted is that it infringed its own word trade mark whether the respective goods and services can 'Canon'. That mark had already been regis- nevertheless be regarded as similar. tered, inter alia, in respect of 'still and motion picture cameras and projectors; television filming and recording devices, television trans- mission devices, television receiving and repro- duction devices, including tape and disc devices for television recording and repro- duction'. 16. When Pathe's application was examined by the German authorities the first examiner considered that the goods and services of the opposing parties were indeed similar and accordingly refused to register the mark ' C A N N O N ' . The second examiner set aside that decision and dismissed the opposition on 14. At the time the opposition by CKK was the ground that there was no similarity. CKK lodged the Trade Marks Directive had appealed to the Bundespatentgericht (Federal not been adopted and the national German Patent Court) but its appeal was dismissed by law on trade marks accordingly applied. That law is known as the Warenzeichengesetz ('the WZG'). The Directive, adopted on 21 December 1988 and due to be implemented 5 — Sec paragraph 5 above.

17. The Bundespatentgericht dismissed CKK's appeal because it agreed with the second examiner that there was no similarity, within the meaning of Paragraph 5(4)(1) of the W Z G , between the parties' goods and 19. It explained that the Bundespatentgericht services. In its view, there could be similarity had already found, in 1989, that there was not only if the goods or services, in accordance a single manufacturer of leisure electronic with their economic significance and use, and devices to be found among the video tape with respect in particular to their usual places producers in the 1988 Seibt industry cata- of manufacture and sale, had such close points logue; no significant changes had taken place of contact that the average purchaser might in the meantime in that respect, at least in form the opinion that they came from the relation to recorded video cassettes; and same business operation. CKK claims that inquiries in relevant specialist shops had shown 76.6% of the population knew its mark in that no name of a manufacturer of television November 1985 and the Bundesgerichtshof devices or video recorders could be found in states that that must be taken as meaning that the range of recorded video cassettes. The the mark 'Canon' was a recognised mark. The Bundespatentgericht accordingly considered Bundespatentgericht, however, considered that that it could not be assumed that the relevant the reputation of CKK's mark was of no sig- average purchaser thought that recorded video nificance in assessing the similarity of the tapes and the corresponding recording and goods and services in question. reproduction devices came from the same business operation. Even members of the public were sufficiently aware of the different conditions for the manufacture of recorded cassettes and understood that video cassettes and video recorders do not come from the same manufacturer.

'May account be taken, when assessing the similarity of the goods or services covered by the two marks, of the distinctive character, in particular the reputation of the mark with earlier priority (on the date which determines 21. In its appeal against the order of the the seniority of the later mark), in particular Bundespatentgericht, CKK argues that, since in such a way that likelihood of confusion the implementation of the Trade Marks Direc- within the meaning of Article 4(1)(b) of the tive into German law, the approach of the Directive must be taken to exist even if the Bundespatentgericht to the assessment of the public attributes the goods and/or services t o similarity of goods or services is no longer different origins?' appropriate. It submits that its mark 'Canon' is a famous or well-known mark and that that fact, coupled with the fact that video film cas- settes and video recording and reproduction devices are offered through the same points of sale, should lead to the conclusion that the goods covered by the two marks are similar and that there is consequently a likelihood of the public being confused within the meaning 23. The Bundesgerichtshof explains that the of Paragraph 9(1)(2) of the Markengesetz. 6 essential question is whether the adoption of the Trade Marks Directive requires the German courts to change their approach in assessing the similarity of goods or services. It accordingly seeks to ascertain which cri- teria should be applied in assessing whether goods or services are similar within the 6 — As explained earlier, that provision corresponds to Article 4(1)(b) of the Directive. meaning of Article 4(1)(b) of the Directive.

24. The order for reference contains the fol- relation to dissimilar goods and services by lowing information as to the implementation virtue of Article 4(4)(a) of the Directive. of the Directive. When implementing the Although that provision is optional, the Directive, the German legislature started from Bundesgerichtshof states that it has been the assumption that the concept of the simi- implemented into German law by Paragraph larity of goods or services could not be under- 9(1)(3) of the Markengesetz. However, the stood in the same way as that concept had Bundesgerichtshof stresses that it is impor- been understood under the previous German tant to distinguish between the application of law. In the explanatory memorandum to the Article 4(1 )(b) and Article 4(4)(a) because, draft Markenrechtsreformgesetz (Trade Mark under national law, the initial registration of Reform Law), it was stated that in future it a mark in relation to dissimilar goods cannot would not be possible to refer back to the be opposed per se under the national provi- 'static' concept of similarity developed in the sions implementing Article 4(4)(a): the person previous law. objecting can only commence an action for cancellation of the mark once it has been reg- istered or bring proceedings for infringement of his own mark, the idea being that the reg- istration procedure should be carried out in an abstract, systematic way. Article 4(1)(b), 25. Under the previous law, there had to be on the other hand, is a ground for opposing objective similarity between the goods or ser- the registration of a mark. The question vices: there was thus no protection under whether a particular use of a mark falls within trade-mark law where there was no objective Article 4(1)(b) or Article 4(4)(a) is accord- similarity of goods and services, however ingly of considerable practical importance. similar the marks and whatever the reputa- tion of the earlier mark. Commentators argue that, since implementation of the Directive, that is no longer the case: there is now an inverse correlation between, on the one hand, the similarity of the goods and services and, on the other, the similarity of the marks and the distinctive character of the earlier mark. The meaning of 'confusion' Thus the closer the marks and the more dis- tinctive the earlier mark, the less similarity of goods o r services needs to be shown. According to the Bundesgerichtshof, such an interpretation would mean that it would be considerably easier than under the previous German law to demonstrate a likelihood of confusion.

28. That case concerned the interpretation of Article 4(1)(b) of the Directive in so far as it refers to 'a likelihood of confusion on the part of the public, which includes the likeli- hood of association with the earlier trade mark'. The Court explained that it had been submitted that 'the likelihood of association may arise in three sets of circumstances: (1) where the public confuses the sign and the mark in question (likelihood of direct confu- sion): (2) where the public makes a connec- 30. It follows that if, in the present case, there tion between the proprietors of the sign and is no likelihood of the public assuming that those of the mark and confuses them (likeli- there is any sort of trade connection between hood of indirect confusion or association); (3) the marks 'Canon' and ' C A N N O N ' , there is where the public considers the sign to be no likelihood of confusion within the meaning similar to the mark and perception of the sign of Article 4(1)(b) of the Directive. The Com- calls to mind the memory of the mark, mission suggests however that the question although the two are not confused (likelihood refers to the attribution of goods or services of association in the strict sense)'. ' to different 'places of origin'; and that con- cept may reflect the importance attached by the previous German trade-mark law to the place of manufacture of the goods in ques- tion. In that respect it should be noted that it is not sufficient to show simply that there is no likelihood of the public being confused as 29. The Court stated that it was therefore to the place in which the goods are manufac- necessary to determine 'whether Article tured or the services performed: if, despite 4(1)(b) can apply where there is no likelihood recognising that the goods or services have of direct or indirect confusion, but only a different places of origin, the public is likely likelihood of association in the strict sense'. 10 to believe that there is a link between the two It concluded: 'The terms of the provision itself exclude its application where there is no concerns, there will be a likelihood of confu- sion within the meaning of the Directive.

31. The main argument in this case has focused on the question whether the degree of dis- tinctiveness of a mark, in particular its repu- tation, can be taken into account when assessing whether goods or services should be regarded as similar within the meaning of Article 4(1 )(b). In other words, is it permis- 33. CKK, the French Government and the sible to consider goods or services to be Commission are all of the view that the degree similar in relation to particularly distinctive of distinctiveness of a mark is relevant to the marks when such goods or services would test of the similarity of products or services. not be considered to be similar in relation to At the hearing the Italian Government stated other, less distinctive marks? O r should the that the notion of similarity is a very vague test for assessing the similarity of goods or concept which cannot be based on objective services be objective (i. e. unrelated to the factors alone. nature of the marks in question)?

in particular, on the recognition of the trade 37. Pathe and the United Kingdom, however, mark on the market, on 14 the association advocate an objective, independent assess- which can be made with the used or regis- ment of the similarity of the goods or services tered sign, [and] on 15 the degree of similarity (i. e. an assessment made without regard to between the trade mark and the sign and the nature or reputation of the earlier mark). between the goods or services identified, con- The United Kingdom maintains that to stitutes the specific condition for such protec- require, at the stage of registering a mark, tion; whereas the ways in which likelihood of that the reputation of an earlier mark be taken confusion may be established, and in par- into account when assessing the similarity of ticular the onus of proof, are a matter for the goods or services in question would place national procedural rules which are not preju- an undue burden on examiners and consider- diced by the Directive'. ably lengthen the registration process. Pathe also argues that large companies would delib- erately delay registration processes.

I-5519

OPINION OF MR JACOBS — CASE C-39/97

of the mark. That statement set in its context held that the 'likelihood of confusion must ... reads as follows: be appreciated globally, taking into account all factors relevant to the circumstances of the case'. 16It is true that that statement was made in a different context: the Court was there considering the question whether conceptual similarity of the marks alone could give rise to confusion within the meaning of Article 'Whereas the protection afforded by the reg- 4(1)(b), in a situation in which the goods in istered trade mark, the function of which is in question were clearly the same. However the particular to guarantee the trade mark as an statement is one of general application. indication of origin, is absolute in the case of identity between the mark and the sign and goods or services; whereas the protection applies also in case of similarity between the mark and the sign and the goods or services; whereas it is indispensable to give an inter- pretation of the concept of similarity in rela- tion to the likelihood of confusion; whereas 41. The United Kingdom Government seeks the likelihood of confusion, the appreciation to refute the argument that the tenth recital of which depends on numerous elements and, of the preamble to the Directive supports a in particular, on the recognition of the trade global approach. It maintains that that recital mark on the market, [on] the association means simply that in assessing similarity regard which can be made with the used or regis- should be had to the question whether the tered sign, [on] the degree of similarity goods or services are such that the public between the trade mark and the sign and might be confused into thinking that they between the goods or services identified, con- have the same trade origin, and that in making stitutes the specific condition for such protec- that assessment it is not permissible to have tion ...' regard to the reputation of the earlier mark.

44. I would emphasise that although in my view the degree of recognition of the mark must be taken into account in deciding whether there is sufficient similarity to give rise to confusion, the requirement of simi- larity must be given full weight, both in assessing the similarity of the marks and in assessing the similarity of the goods or ser- vices in question. It is therefore incorrect to 43. In addition, the dangers of lengthening suggest that, in consequence of the imple- the registration process by requiring consid- mentation into national law of Article 4(1 )(b) eration of an earlier trade mark's reputation of the Directive, it may no longer be neces- do not appear to me to be as serious as Pathe sary in the case of a particularly distinctive and the United Kingdom Government sug- mark to establish the similarity of the goods gest. The French Government stated at the or services in question. In assessing the simi- hearing that, in its experience, such consider- larity of the goods or services it will be helpful ation did not unduly lengthen or complicate to have regard to the factors suggested by the the procedure. Indeed, it may be in the interest United Kingdom and French Governments. of legal certainty to ensure that marks whose use may be challenged successfully are not registered in the first place. In any event, it seems to me that the tenth recital of the pre- amble to the Directive indicates that the repu- tation of a trade mark should be taken into account in assessing the likelihood of confu- sion between two marks even if it cannot be 45. According to the United Kingdom Gov- taken into account in assessing the similarity ernment, the following type of factors should of goods and services. Moreover, the Com- be taken into account in assessing the simi- munity Trade Mark Registry will be obliged larity of goods or services: to consider the question of the reputation of a mark in many cases since the Community Trade Mark Regulation contains a provision similar to Article 4(4)(a) of the Directive. Under Article 8(5) of the Regulation the pro- prietor of an earlier mark which has a reputa- (a) the uses of the respective goods or ser- tion can oppose, subject to certain conditions, vices;

49. Against that view it might be argued that the simpler and more objective the test of the 17 — Taken from the judgment of the English High Court in similarity of goods and services under Article British Sugar Plc v James Robertson & Sons Ltd on 23 May 1996, [1996] RPC 281. 4(1)(b), the less likely national trade mark

I - 5522

CANON KABUSHIKI KAISHA v METRO-GOLDWYN-MAYER

registries or courts in different Member States tion of a mark or prohibition of its use) would would be to adopt different assessments as to often be the same. whether a particular mark is confusing. That would be consistent with the Directive's aim of harmonising Member States' trade-mark laws.

18 — Statement made by the Commission at the hearing in Case 19 — See Articles 10 to 12 of the Directive C-63/97 BMW on 13 January 1998. 20 — Cited in note 8, at paragraphs 50 and 51.

I - 5523

OPINION OF MR JACOBS - CASE C-39/97

Conclusion

52. Accordingly the question referred by the Bundesgerichtshof should in my opinion be answered as follows:

In the assessment of the similarity of goods or services covered by two marks within the meaning of Article 4(1 )(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, account may be taken of the distinctive character, in particular the reputa- tion, of the earlier mark in deciding whether there is sufficient similarity to give rise to a likelihood of confusion. However, there will only be a likelihood of confu- sion within the meaning of that provision if it is likely that the public will be con- fused into thinking that there is some sort of trade connection between the sup- pliers of the goods or services in question.