C-342/97

3. Klijsen Handel BV ('Klijsen') has manu- factured and distributed shoes in Germany since 1991 (and from 1970 in the Nether- lands) under the trade mark 'Loint's'. The shoes are sold in shops specialising in leisure shoes, over 90% of sales being women's shoes. Klijsen obtained interna- tional registration of the mark 'Loint's' on 5. The referring court has found that the 24 August 1994 and applied for protection goods covered by the two marks are to be extended to Germany. It also had a identical, rejecting Klijsen's suggestion that word/picture mark 'Loint's' registered on they are different in that the 'Loint's' mark 26 February 1996 with protection exten- is used solely for leisure shoes, a market on ded to Germany. which Lloyd has no appreciable presence. The referring court is however uncertain whether there is a likelihood of confusion * Original language: English. 1 — Council Directive 89/104/EEC of 21 December 1988, between the two marks within the meaning OJ 1989 L 40, p. 1. of Article 5(1 )(b) of the Directive.

I - 3821

OPINION OF MR JACOBS — CASE C-342/97

6. Article 5(1) of the Directive provides: because of the degree of recognition of 36%, noting that in the abovementioned consumer survey of November 1995 33 brands of shoe had a degree of recognition of over 20%, 13 a degree of recognition of 40% or over and 6 a degree of recognition 'The registered trade mark shall confer on of 70% or over. It therefore decided to put the proprietor exclusive rights therein. The the following questions to the Court: proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

I - 3822

LLOYD SCHUHFABRIK MEYER V KLIJSEN HANDEL

3. Must a special distinctive character, rules, as interpreted by the Court, to the and hence an extended material scope facts of the individual case. 3 of protection of a distinguishing sign, already be taken to exist where there is a degree of recognition of 10% in the relevant section of the public?

9. It is true that the Court has on occasions at the prompting of national courts given rulings tied closely to the facts of particular cases. The distinction between interpreta- Would that be the case with a degree of tion and application is not clear-cut — recognition of 36%? indeed interpretation may be considered an integral part of the process of applying a legal rule. Almost any question, however specific to a particular set of facts, can be formulated in the guise of an abstract question of interpretation. That point is Would such an extension of the scope illustrated by the referring court's first of protection lead to a different answer question, which is formulated both as an to Question 1, if that question were to abstract question of interpretation and as be answered by the Court of Justice in an explicit inquiry concerning the possible the negative? conflict between the 'Lloyd' and 'Loint's' marks.

— the criteria to be applied in assessing 12. Moreover, while the Directive must be the likelihood of confusion and in interpreted as laying down uniform criteria particular the relevance of the aural for assessing the likelihood of confusion, similarity of the mark and the sign, those criteria may fall to be applied differ- ently in the Member States because, inter alia, of linguistic differences. For example, while 'Lloyd' and 'Loint's' may seem to have little aural or visual similarity to an — the significance to be attached to the English-speaker, that may not be the case fact that the likelihood of confusion is for a German-speaker given that the letter stated to include the 'likelihood of 't' and a final 'd' are pronounced similarly association', in German. Consequently, it seems appro- priate that the national courts of a Member State should assess the likelihood of confu- sion in the minds of the public of that State.

— the circumstances in which a mark is to be regarded as having a distinctive character and in particular the impor- tance of the degree of recognition of the mark and the absence of descriptive elements, and 13. It may be noted further that in the present field the legal criteria to be inferred from the Directive are comparatively few and yet fall to be applied to an almost limitless number of factual situations. In such circumstances the Court can contri- — the significance to be attached to the bute more effectively to the uniform appli- distinctive character of a mark in the cation of the Directive and to legal cer- assessment of confusion.

16. As regards the meaning of the term 'likelihood of association', raised in the 'As pointed out in paragraph 18 of this present case by the referring court's second judgment, Article 4(1 )(b) of the Directive question, the Court held in SABEL: does not apply where there is no likelihood of confusion on the part of the public. In that respect, it is clear from the tenth recital in the preamble to the Directive that the appreciation of the likelihood of confusion "depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or 'In that connection, it is to be remembered registered sign, of the degree of similarity that Article 4(l)(b) of the Directive is between the trade mark and the sign and designed to apply only if, by reason of the between the goods or services identified". identity or similarity both of the marks and The likelihood of confusion must therefore of the goods or services which they desig­ be appreciated globally, taking into account nate, "there exists a likelihood of confusion all factors relevant to the circumstances of on the part of the public, which includes the case. the likelihood of association with the ear­ lier trade mark". It follows from that wording that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define That global appreciation of the visual, its scope. The terms of the provision itself aural or conceptual similarity of the marks exclude its application where there is no in question, must be based on the overall likelihood of confusion on the part of the impression given by the marks, bearing in public. mind, in particular, their distinctive and

18. In the context of the present case it may In that perspective, the more distinctive the be helpful to add the following. First, with earlier mark, the greater will be the like- reference to Question 1, it is clear from the lihood of confusion. It is therefore not ruling in SABEL that the likelihood of impossible that the conceptual similarity confusion must be assessed globally in the resulting from the fact that two marks use light of all relevant factors. Contrary to the images with analogous semantic content view expressed by Lloyd, it may therefore may give rise to a likelihood of confusion be relevant, depending on the circum- where the earlier mark has a particularly stances, to consider not only the degree of distinctive character, either per se or aural similarity of the mark and the sign because of the reputation it enjoys with but also the degree (or absence) of visual the public. and conceptual similarity. In the absence of visual or conceptual similarity it would be necessary to consider whether, having regard to all the circumstances including the nature of the goods and the conditions in which they were marketed, the degree of However, in circumstances such as those in any aural similarity would of itself be likely point in the main proceedings, where the to give rise to confusion. earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion. 19. As the tenth recital in the preamble to the Directive makes clear, 'the ways in which likelihood of confusion may be established, and in particular the onus of proof, are a matter for national procedural rules which are not prejudiced by the The answer to the national court's question must therefore be that the criterion of "likelihood of confusion which includes 6 — SABEL, paragraphs 22 to 26.

20. The standard and criteria to be applied, 21. With reference to Question 3 it is clear however, in making that assessment are a from the ruling in SABEL that a mark may matter of Community law. As Klijsen be particularly distinctive either per se or observes, the likelihood of confusion must because of the reputation it enjoys with the be properly substantiated and genuine — it public and that 'the more distinctive the must not be merely hypothetical or remote. mark, the greater will be the likelihood of In SABEL the Court, in concluding that a confusion'. The national court inquires mark was to be perceived as a whole rather whether there is a threshold above which than by reference to its various compo­ a mark acquires, by virtue of its degree of nents, applied the test of the average recognition, a particularly distinctive char­ consumer for the particular type of goods acter and enjoys 'an extended material or services. Contrary to Lloyd's suggestion scope of protection'. The Directive does at the hearing, such a test is consistent with not however seek to lay down such a its rulings in other cases in which it has threshold. The degree of recognition is considered whether a description, trade one factor which along with others must mark or promotional description or state­ be taken into account in making the overall ment was liable to mislead the consumer. In assessment of the likelihood of confusion such cases the Court has taken into account for the average consumer of the goods or the presumed expectations of an average services in question. There is no specific consumer of the goods or services in threshold beyond which it should be given question who is reasonably well informed decisive weight. and reasonably observant and circum­ spect. 7 It seems to me that the same criterion applies here. As I explained at paragraphs 50 and 51 of my Opinion in SABEL, an unduly high level of protection would impede the integration of national markets by imposing unjustified restric­ 22. With reference to Question 4, it is clear 7 — See most recently Case C-210/96 Cut Springenheide, from SABEL 8 that the likelihood of con­ judgment of 16 July 1998, paragraphs 30 and 31. See also fusion may be greater where a mark is Case C-362/88 CB-INNO-BM [1990] ECR I-667; Case C-238/89 Pall [1990] ECR I-4827; Case C-126/91 Yves particularly distinctive per se. That will be Rocher [1993] ECR I-2361; Case C-315/92 Verband so where it has certain aural, visual or Sozialer Wettbewerb ν Clinique Laboratories and Estéé Lauder [1994] ECR I-317; Case C-456/93 Langguth [1995] conceptual features which particularly dis- ECR I-1737; and Case C-470/93 Verein gegen Unwesen in Handel und Gewerbe Köln ν Mars [1995] ECR I-1923. See also the Opinion of Advocate General Fennelly of 29 Sep­ tember 1998 in Case C-303/97 Verbraucherschutzverein ν Sektkellerei G.C. Kessler, in particular at paragraph 29 et 8 — See also the judgment of 29 October 1998 in Case C-39/97 seq. Canon, paragraphs 17 and 18.

I - 3828

LLOYD SCHUHFABRIK MEYER V KLIJSEN HANDEL

(2) The concept of the likelihood of association, as referred to in Article 5(1 )(b), is not an alternative to that of likelihood of confusion but serves to define its scope.

(3) The Directive does not lay down a threshold above which a mark automatically acquires, by virtue of its degree of recognition, a particularly distinctive character and enjoys greater protection. The degree of recognition of a mark is one factor to be taken into account in the overall assessment of confusion. The greater the degree of recognition of the mark, the greater the likelihood of confusion with a similar sign.

(4) The fact that a mark has no descriptive elements may be a factor in assessing the distinctiveness of a mark but does not itself increase the likelihood of confusion.

I - 3829