C-375/97

GENERAL MOTORS V YPLON

OPINION OF ADVOCATE GENERAL JACOBS delivered on 26 November 1998 *

1. In the present case the Court is asked Facts and procedure before the national once again to venture into the largely court uncharted territory of Community trade- mark law. The question posed by the Tribunal de Commerce (Commercial Court), Tournai (Belgium) concerns the interpretation of the concept of a trade mark with 'a reputation' in a Member 3. General Motors Corporation ('General State, referred to in Article 4(4)(a) and Motors'), the plaintiff in the main national Article 5(2) of the First Council Directive proceedings, is incorporated in the United to approximate the laws of the Member States of America. It is the proprietor of the States relating to trade marks ('the Trade trade mark 'Chevy', in respect of which it Marks Directive' or simply 'the Direc- applied for registration on 18 October tive'). 1 1971 to the Benelux Trade Mark Office. The mark is registered under Benelux registration number 702 63 in respect of, inter alia, motor vehicles. That registration asserts the rights acquired under an earlier Belgian application for registration dated 1 September 1961 and earlier use in the Netherlands and Luxembourg in 1961 and 1962 respectively. Nowadays the mark is used more specifically in Belgium to desig- nate vans and similar vehicles.

2. The Directive itself makes no attempt at a definition. Moreover, whilst there has been discussion at international level with a view to a common definition of the concept of a 'well-known' mark within the meaning of the Paris Convention, the Directive 4. The defendant in the main proceedings, appears to make a distinction between Yplon SA ('Yplon'), has its registered office 'well-known' marks (which are referred to in Bailleul, Belgium. It too uses the mark in Article 4(2)(d) of the Directive) and 'Chevy', albeit not in relation to cars. marks with 'a reputation'. Yplon employs the mark in relation to detergents, deodorants and various clean- ing products. It is stated in the order for * Original language: English. 1 — Directive 89/104/EEC of 21 December 1988, OJ 1989 reference that, since 1988, Yplon has L 40, p. 1. registered and made normal, even exten-

7. However, as of 1 January 1996, Arti- cle 13(A)(2) of the Uniform Benelux Law was replaced by Article 13(A)(1)(c) in accordance with the protocol, amending 9. That law was amended in order to that law, dated 2 December 1992. Conse- implement the Trade Marks Directive in

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Benelux law, albeit belatedly: although the trade mark and thus damages its advertis- Directive was to be implemented in Mem- ing function. ber States' laws by 31 December 1992, the amended Benelux law did not enter into force until 1 January 1996. 2 Arti- cle 13(A)(1)(c) of the amended Benelux law states that a proprietor of a trade mark is entitled to oppose any use, in the course of trade and without due cause, of a trade 11. Yplon, however, argues that General mark which has a reputation in the Benelux Motors' trade mark 'Chevy' does not have countries or of a similar sign for goods a reputation within the Benelux countries which are not similar to those for which the and thus cannot benefit from the protection trade mark is registered, where the use of afforded by the provisions in question. that sign would take unfair advantage of, Moreover, since the products covered by or would be detrimental to, the distinctive the registrations of the respective trade character or the repute of the trade mark. marks are quite different, Yplon considers That provision is intended to implement that the use of its trade mark 'Chevy' Article 5(2) of the Directive, the terms of cannot be detrimental to the distinctive which are set out at paragraph 20 below. character of General Motors' trade mark.

Admissibility

14. The Commercial Court, Tournai, 16. Although the question posed is in terms observes that the application of the provi- of an interpretation of national law, over sion of Benelux law relevant to the present which this Court has no jurisdiction in case involves an understanding of the Article 177 proceedings, I consider the concept of a trade mark with a 'reputation'. reference to be admissible since Arti- Noting that there has been no jurispru- cle 13(A)(1)(c) is intended to implement dence concerning the meaning to be given Article 5(2) of the Directive. As the Com- to the concept, and considering it necessary mission observes, the Court can therefore to establish such meaning for application assist the national court by framing its by the courts, it has posed the following answer in terms of an interpretation of the question to this Court: Directive.

17. The question can accordingly be O n reading Article 13(A)(1)(c) of the Uni- rephrased as follows: form Benelux Law introduced pursuant to the amending protocol in force since 1 Jan- uary 1996, what is the proper construction of the term "repute of the trade mark" and may it also be said that such "repute" '(1) How is the concept of a trade mark applies throughout the Benelux countries with a "reputation" within the mean- or to part thereof?' ing of Article 5(2) of the Directive to be interpreted ?

15. In the proceedings before this Court (2) Must the reputation of the trade mark written observations have been submitted extend throughout the three Benelux by General Motors and Yplon, by the countries or is it sufficient that its Belgian, French and Netherlands Govern- reputation is established in one of those ments and by the Commission. At the countries or part thereof?'

(b) any sign where, because of its identity with, or similarity to, the trade mark 19. According to the ninth recital of the and the identity or similarity of the preamble, despite the harmonising aim of goods or services covered by the trade the Directive, Member States are not pre- mark and the sign, there exists a like- vented from 'granting at their option lihood of confusion on the part of the extensive protection to those trade marks public, which includes the likelihood of which have a reputation'. 3 Moreover, the association between the sign and the sixth recital of the preamble states that the trade mark. Directive 'does not exclude the application to trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer 2. Any Member State may also provide that protection'. the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade 20. Article 5 of the Directive specifies the mark is registered, where the latter has a rights conferred by a trade mark: reputation in the Member State and 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.' '1. The registered trade mark shall confer on the proprietor exclusive rights therein.

3 — The recital should probably read, not 'extensive protection', 21. Provisions corresponding to Arti- but 'more extensive protection' (in the French text 'une protection plus large'). cle 5(l)(a), 5(l)(b) and 5(2) appear in

The structure of the Directive 25. Thirdly, Member States are given the option of providing a further type of protection for marks with a reputation, in respect of the use of an identical or similar sign in relation to goods or services which are not similar to those for which the trade 23. The Directive thus provides for three mark is registered, where use of that sign different levels of protection. In the first without due cause takes unfair advantage place, trade-mark owners have an auto- of, or is detrimental to, the distinctive matic right to prohibit the use of identical character or the repute of the mark: pursuant to Article 5(2) Member States may provide that, in such circumstances, 4 — Article 4(3) contains provisions corresponding to Arti- the proprietor of the mark shall be entitled cle 4(4)(a) in relation to a Community trade mark, and refers to a Community trade mark which has a reputation in to prevent third parties from using the the Community. Protection for such Community marks mark in the course of trade without the however is mandatory, not optional. 5 — O J 1994 L 11, p. 1. proprietor's consent. It is the meaning of

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the term 'mark with a reputation' which is relation to similar goods or services. Pro­ at issue in the present case. tection in relation to dissimilar goods or services has often been afforded under national law concerning unfair competition and the like rather than under trade mark law.

Article 5(2)

7 — See the Commission proposal, OJ 1980 C 351, p. I and EC 6 — Case C-251/95 SABEL ν Puma [1997] ECR I - 6191. Bulletin, Supplement 5/80.

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the type of harm against which protection WIPO Memorandum on well-known is provided. These are key features of marks. 9 Article 5(2).

32. In order to understand the relationship between the two terms, it is useful to consider the terms and purpose of the protection afforded to well-known marks under the Paris Convention and the Agree- ment on Trade-Related Aspects of Intellec- Marks with a reputation and well-known tual Property Rights (TRIPs). Article 6 bis marks 8 of the Paris Convention provides that well- known marks are to be protected against the registration or use of a 'reproduction, an imitation, or a translation, liable to create confusion' in respect of identical or similar goods. That protection is extended 30. Both in the proceedings before the by Article 16(3) of TRIPs to goods or Court, and in general debate on the issue, services which are not similar to those in attention has focused on the relationship respect of which the mark is registered, between 'marks with a reputation' in provided that use of the mark would Article 4(4)(a) and Article 5(2) of the 'indicate a connection between those goods Directive and well-known marks in the or services and the owner of the registered sense used in Article 6 bis of the Paris trade mark and provided that the interests Convention for the Protection of Industrial of the owner of the registered trade mark Property. Well-known marks in that sense are likely to be damaged by such use'. The are referred to in Article 4(2)(d) of the purpose of the protection afforded to well- Directive. known marks under those provisions appears to have been to provide special protection for well-known marks against exploitation in countries where they are not yet registered.

36. There is also ambiguity in the English version. The term 'well known' in Article 6 bis of the Paris Convention has a quantita- tive connotation (The Concise Oxford Dictionary defines 'well known' as 'known to many' 10 ), whereas the term 'reputation' in Article 4(4)(a) and Article 5(2) might arguably involve qualitative criteria. The Concise Oxford Dictionary defines reputa- 34. That view is supported by at least some tion as '(1) what is generally said or language versions of the Directive. In the believed about a person's or thing's char- German text, for example, the marks acter or standing...; (2) the state of being referred to in Article 6 bis of the Paris well thought of; distinction; respectabil- Convention are described as 'notorisch ity;... (3) credit, fame, or notoriety'. Indeed bekannt', whereas the marks referred to in it has been suggested that there is a Article 4(4)(a) and Article 5(2) are discrepancy between the German text com- described simply as 'bekannt'. The two pared with the English and French texts on terms in Dutch are similarly 'algemeen the grounds that the 'reputation' of a bekend' and 'bekend' respectively. trademark is not a quantitative concept but simply the independent attractiveness of a mark which gives it an advertising value. 11

37. Whether a mark with a reputation is a 35. The French, Spanish, and Italian texts, quantitative or qualitative concept, or both, however, are slightly less clear since they employ respectively the terms 'notoirement connues', 'notoriamente conocidas', and 10 — Or 'known thoroughly' but that latter meaning is clearly 'notoriamente conosciuti' in relation to inapplicable in the context of trade marks. marks referred to in Article 6 bis of the 11 — Annette Kur, 'Well-known marks, highly renowned marks and marks having a (high) reputation — what's it all Paris Convention, and the terms 'jouit about?', 23 IIC 218 (1992).

40. First, as the French Government itself 38. The question then arises whether any criteria can be laid down for establishing has emphasised — as have others in these what is meant by a mark with a reputation. proceedings — it is difficult to give a The French Government submits that, general definition and it is essential that because Article 5(2) derogates from a fun- national courts should proceed on a case- damental principle of trade mark law, by-case basis without using fixed criteria namely the principle of speciality, by pro- which may prove arbitrary in their applica- viding protection in relation to unrelated tion to specific cases. For example, the goods and services, the provisions must be practice of using fixed percentages of the interpreted strictly. It maintains that, relevant public is now widely criticised, and although Article 5(2) is not limited, as may be inadequate if taken alone. Yplon suggests, to famous marks, never- theless if a mark is to benefit from Arti- cle 5(2) it must satisfy two conditions: first, it must be known to a large part of the public concerned by the two products in question — in the present case, cleaning materials and cars; secondly, the earlier mark must have a reputation such that the consumer, on seeing the contested mark, associates the latter with the earlier mark and makes a connection between the two. 41. Secondly, the courts should for a rea- listic assessment of reputation use a variety of criteria which might include, for exam- ple, the degree of knowledge or recognition of the mark in the relevant sectors of the public; the duration, extent and geographi- cal area of use of the mark; and the scale and scope of investment in promoting the mark. 12 39. Certainly it seems to me that, if the notion of mark with a reputation is to have any meaning, it must be established that the 12 — Compare the discussions of a 'well-known' mark held by the World Intellectual Property Organisation in Geneva. mark is known to a significant part of the See in particular the following documents produced for the relevant sectors of the public. It seems Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications in connection with doubtful, however, whether it is necessary its meeting in July 1998: SCT/1/3, SCT/1/5, SCT/1/6.

45. I turn now to the question whether, in view of the unified nature of the Benelux trade-mark system, the reputation of a 43. It is to be noted in particular that trade mark must extend throughout the Article 5(2), in contrast to Article 5(l)(b), three Benelux countries or whether it is does not refer to a mere risk or likelihood sufficient that its reputation is established of its conditions being fulfilled. The word- in one of those countries or part thereof. ing is more positive: 'takes unfair advan- The existence of the Benelux system of tage of, or is detrimental to' (emphasis trade-mark registration is expressly recog- added). Moreover, the taking of unfair nised in Article 1 and Article 4(2)(a) of the advantage or the suffering of detriment Directive. However, Article 4(4)(a) and must be properly substantiated, that is to Article 5(2) refer to marks which have a say, properly established to the satisfaction reputation in the 'Member State' con- of the national court: the national court cerned. must be satisfied by evidence of actual detriment, or of unfair advantage. The precise method of adducing such proof should in my view be a matter for national rules of evidence and procedure, as in the case of establishing likelihood of confusion: 46. It appears that, under the Benelux see the tenth recital of the preamble. system, if an action is brought claiming simply that the use of a registered trade mark is prohibited, an order prohibiting such use can be limited to one particular country, but that the registration of a trade mark stands or falls in relation to the whole of the Benelux.13 I agree with the Com- 44. I accordingly conclude in answer to the mission's view that, since the Benelux first question that a trade mark with a countries have unified their trade-mark reputation within the meaning of Arti- legislation, the Benelux territory must be cle 5(2) of the Directive is to be interpreted as meaning a mark which is known to a significant part of the relevant sectors of 13 — Thierry van Innis, Les signes distinctifs, Brussels, 1997, at the public, but which need not attain the pp. 467 to 469.

(2) It is sufficient that such reputation extends to a substantial part of the Benelux territory, which may be part only of one of the Benelux countries.

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