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(b) a third party, without the consent of the proprietor of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, * Original language: English. those for which the trade mark is 1 — First Council Directive 89/104/EEC of 21 December 1988 registered, a sign which so closely to approximate the laws of the Member States relating to corresponds to the mark as to give rise trade marks, OJ 1989 L 40, p. 1. 2 — Case C-251/95 [1997] ECR I-6191. to the possibility of its being associated 3 — Paragraphs 18 and 19. with that mark, must Article 5(1)(b) of

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Directive 89/104 be interpreted as granting at their option extensive protec- meaning that the exclusive right tion to those trade marks which have a enjoyed by the proprietor entitles him reputation; to prevent the use of the sign by that third party if the distinctive character of the mark is such that the possibility of such association giving rise to con- fusion cannot be ruled out?'

4. The 9th and 10th recitals of the pre- amble to the Directive are in the following terms, in so far as is relevant: 5. Article 4(1)(b) of the Directive provides that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid 'if because of its identity with, or similarity to, the earlier trade mark and the 'Whereas it is fundamental, in order to identity or similarity of the goods or facilitate the free circulation of goods and services covered by the trade marks, there services, to ensure that henceforth regis- exists a likelihood of confusion on the part tered trade marks enjoy the same protec- of the public, which includes the likelihood tion under the legal systems of all the of association with the earlier trade mark'. Member States; whereas this should how- ever not prevent the Member States from 5 — The word 'of', rather than 'on', appears in the English text by mistake. 4 — Third recital in the preamble. 6 — See note 5 above.

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10. Under the Uniform Benelux Law on trade marks 7('the Benelux Law') 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. 8 Similarity of the marks was 8. I would mention at this point a discre- thus sufficient; in contrast to the position in pancy between the different language ver- other Member States, the Benelux Law did sions of the Directive. Most versions other not require a risk of confusion. Nor did it than the English use the notion of 'risk' or expressly refer to a likelihood of associa- 'danger' of confusion and association tion. That concept was introduced by the rather than 'likelihood'; the Dutch however Benelux Court in the 'Union/Union Soleure' uses the concept of possibility of confusion case in 1983 9 and subsequently reflected in and of association in Article 4(1)(b) and of the Benelux Law after its amendment with possibility of confusion and risk of associa- a view to implementing the Directive: tion in Article 5(1)(b), although the 10th recital in the preamble refers to the 'risk' or 'danger' of confusion. For reasons which I 7 — Annexed to the Benelux Trade Mark Convention of 19 March 1962. will explain later, I do not consider that 8 — Article 13A of the Benelux Law. anything turns on those differences of 9 — Case A 82/5, judgment of 20 May 1983, Henri Julliem BV v Verschuere Norbert, Jurisprudence of the Benelux Court of terminology. Justice 1983, p. 36.

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11. Adidas AG is the proprietor in the 14. In April 1997 the Gerechtshof te 's- Benelux countries of a trade mark consist- Hertogenbosch ('s-Hertogenbosch Regional ing of a logo composed of three stripes. The Court of Appeal) upheld that judgment. mark is generally recognised as belonging According to the referrring court, the to Adidas; the three stripes are not regarded Gerechtshof found (i) that the overall as a purely decorative feature. Adidas impression given by the articles of clothing Benelux is the exclusive licensee of Adidas in question was such that there was a real AG in respect of the Benelux countries. The possibility that an association would be two companies are hereinafter collectively triggered on the part of the relevant section referred to as 'Adidas'. of the general public between Marca's double-stripe motif and Adidas' triple- stripe motif; (ii) that there existed, with regard to the TIM shirt, a possibility that the three stripes featuring on that shirt — which was intended for children of up to 8 years of age and was generally bought by 12. Marca markets a sports clothes collec- their parents — might be associated by the tion, a number of the items in which bear parents with Adidas' triple-stripe motif and on the side two parallel stripes running (iii) that Adidas' mark was generally longitudinally. Marca also markets a white known. and orange T-shirt bearing three black, vertical stripes running in parallel down the entire length of the front of the garment,

15. In May 1997 Marca appealed to the 10 — By a protocol of 2 December 1992 which entered into force on 1 January 1996. Hoge Raad. Before that court it argued, on

the basis of SABEL v Puma, that it was not 17. The Hoge Raad was apparently not sufficient, for the purposes of establishing a persuaded by the arguments of its Advocate trade-mark infringement, to prove the exis- General. In its judgment it expresses the tence of a real likelihood that the relevant view that the judgment in SABEL v Puma section of the general public might associ- does not automatically mean that the ate the sign with the trade mark; instead, it Gerechtshof was wrong in confirming the was necessary to show a likelihood of decision in favour of Adidas. It notes that confusion on the part of the public within in SABEL v Puma the Court ruled that the meaning of Article 5(1)(b) of the Direc- Article 4(1)(b) was not applicable 'where tive. there is no likelihood of confusion on the part of the public' 12 and infers that a mere risk 13 of association is not enough to justify an injunction under Article 5(1)(b) where there can be no question of confu- sion on the part of the public. The Hoge Raad considers however that there are justifiable reasons for concluding that where (on account of other factors) the risk of confusion cannot be excluded, a risk of association may indeed be sufficient to 16. The Advocate General at the Hoge justify an injunction. In its view, SABEL v Raad, Advocate General Bakels, delivered Puma appears to confirm that conclusion his Opinion in September 1998. In his where the earlier mark has a particularly Opinion, Advocate General Bakels reviews distinctive character, either per se or the history of the Benelux provision, the because of the reputation it enjoys with broad protection of marks which had been the public: paragraph 24 of that judgment derived from it, the negotiating history of appears to indicate that, in such circum- the relevant provisions of the Directive and stances, the existence of a risk of associa- the conviction of the Benelux Governments tion is sufficient, since the possibility that and certain Benelux authors and judges the association arising from some semantic that the Benelux provision was compatible or other similarity may create confusion with the Directive. The Advocate General is cannot be ruled out. however clearly of the view that the law has changed as a result of the Directive and that a mere risk of association without a risk of confusion is insufficient; moreover he stres- ses that that view is unquestionably correct since the judgment of the Court in SABEL v Puma (which as he notes postdated the 18. The Hoge Raad adds that the interpre- decision of the Gerechtshof 11). Advocate tation of Article 5(1)(b) in relation to well- General Bakels concludes that the Hoge known marks suggested by such a reading Raad should show that it applies the of the judgment in SABEL v Puma vindi- Court's case-law even if it would have cates the compromise inherent in the inclu- preferred that case-law to have gone the sion of the words 'includes the likelihood of other way. 12 — Paragraphs 18 and 22. 13 — See my comments in paragraph 8 above concerning the 11 — The judgment in SABEL v Puma was delivered in linguistic discrepancies between the Dutch and the English November 1997. versions of the Directive.

19. The Hoge Raad concludes that if its interpretation of SABEL v Puma is correct, there is no cause to quash the Gerechtshof's 22. In my view, the construction of Arti- judgment. That is because, in addition to cle 5(1)(b) proposed by the Hoge Raad is ruling that there was a real possibility that irreconcilable with the scheme and wording Marca's sign might be associated with of the Directive as interpreted by the Court. Adidas' trade mark, the Gerechtshof found Before considering the specific question that that mark was generally known. By referred, namely whether there are grounds virtue of that finding, it cannot be excluded for extending the scope of Article 5(1)(b) that the very real possibility of association where the first mark has a particularly established by the Gerechtshof may give distinctive character, either per se or rise to confusion; consequently, on the basis because of its reputation, I propose to of its suggested interpretation of Arti- examine the general question whether there cle 5(1)(b), the findings of fact made may are grounds for regarding Article 5(1)(b) as justify the grant of the injunctive relief applicable where there is a likelihood of sought by Adidas. association and the possibility of confusion, although not established, cannot be ruled out. Finally, I shall briefly address a point raised by Adidas about the scope of Arti- cle 5(2). Since however I consider that the national court's question in the present case is substantially answered by the decisions of the Court in SABEL v Puma and in a subsequent case, Canon, 14 in which the Court was asked to clarify the relationship 20. The Hoge Raad accordingly referred to the Court for a preliminary ruling the question set out in paragraph 2 above. 14 — Case C-39/97 [1998] ECR I-5507.

23. In SABEL v Puma, the Court was asked 15 Those governments refer to a judgment essentially whether there was a likelihood of the Benelux Court holding that there of confusion for the purpose of Arti- is resemblance between a mark and a cle 4(1)(b) where the public simply made sign when, taking account of the parti- an association between a sign and a mark cular circumstances of the case, in conveying a similar idea — in that case, particular the distinctiveness of the pictorial representations of, first, a bound- mark, the mark and the sign, consid- ing puma and, second, a bounding chee- ered separately and together, present, tah — although the two were not confused. aurally, visually or conceptually, a Under the pre-Directive German law, such similarity such as to establish an asso- association would not have been sufficient ciation between the sign and the mark to preclude registration of the sign: confu- (judgment of 20 May 1983 in Case A sion in the strict sense was required. The 82/5 Jullien v Verschuere, Jur. 1983, question was essentially whether the Direc- vol. 4, p. 36). That decision is based on tive had broadened protection in line with the idea that, where a sign is likely to the pre-Directive law in the Benelux, where give rise to association with a mark, the mere association sufficed. The Court stated public makes a connection between the as follows: sign and the mark. Such a connection may be prejudicial to the earlier mark not only if it gives the impression that the products have the same or a related origin, but also where there is no likelihood of confusion between the '14 The Belgian, Luxembourg and Nether- sign and the mark. Since perception of lands Governments claimed that the the sign calls to mind, often subcon- term "likelihood of association" was sciously, the memory of the mark, included in those provisions of the associations made between a sign and Directive at their request, in order that a mark can result in the "goodwill" they should be construed in the same attached to the earlier mark being manner as Article 13a of the Uniform transferred to the sign and dilute the Benelux Law on Trade Marks which image linked to that mark.

17 It must therefore be determined whe- ther, as those governments claim, Arti- 22 As pointed out in paragraph 18 of this cle 4(1)(b) can apply where there is no judgment, Article 4(1 )(b) of the Direc- likelihood of direct or indirect confu- tive does not apply where there is no sion, but only a likelihood of associa- likelihood of confusion on the part of tion in the strict sense. Such an inter- the public. In that respect, it is clear pretation of the Directive is contested from the 10th recital in the preamble to by both the United Kingdom Govern- the Directive that the appreciation of ment and by the Commission. the likelihood of confusion "depends on numerous elements and, in particu- lar, on the recognition of the trade mark on the market, of the association which can be made with the used or 18 In that connection, it is to be remem- registered sign, of the degree of simi- bered that Article 4(1)(b) of the Direc- larity between the trade mark and the tive is designed to apply only if, by sign and between the goods or services reason of the identity or similarity both identified". The likelihood of confu- of the marks and of the goods or sion must therefore be appreciated services which they designate, "there globally, taking into account all factors exists a likelihood of confusion on the relevant to the circumstances of the part of the public, which includes the case. 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 23 That global appreciation of the visual, serves to define its scope. The terms of aural or conceptual similarity of the

marks in question, must be based on sufficient to give rise to a likelihood of the overall impression given by the confusion. marks, bearing in mind, in particular, their distinctive and dominant compo- nents. The wording of Article 4(1 )(b) of the Directive — "... there exists a likelihood of confusion on the part of the public..." — shows that the percep- tion of marks in the mind of the average consumer of the type of goods 26 The answer to the national court's or services in question plays a decisive question must therefore be that the role in the global appreciation of the criterion of "likelihood of confusion likelihood of confusion. The average which includes the likelihood of asso- consumer normally perceives a mark as ciation with the earlier mark" con- a whole and does not proceed to tained in Article 4(1)(b) of the Direc- analyse its various details. tive is to be interpreted as meaning that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision.' 24 In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a 24. In Canon, the company MGM had likelihood of confusion where the ear- applied to register the mark 'CANNON' lier mark has a particularly distinctive in respect of certain goods including video character, either per se or because of film cassettes. Canon opposed the applica- the reputation it enjoys with the public. tion on the ground that it infringed its own mark 'Canon', already registered in respect of certain goods including television film- ing and recording devices and accepted as having a reputation (unlike Puma's mark, which was found by the national court not to be particularly distinctive either per se or because of its reputation). The Court was 25 However, in circumstances such as asked whether, on a proper construction of those in point in the main proceedings, Article 4(1)(b) of the Directive, the distinc- where the earlier mark is not especially tive character of the earlier trade mark, and well known to the public and consists in particular its reputation, was to be taken of an image with little imaginative into account when determining whether the content, the mere fact that the two similarity between the goods or services marks are conceptually similar is not covered by the two trade marks was

17 A global assessment of the likelihood of confusion implies some interdepen- dence between the relevant factors, 'Likelihood of confusion' and in particular [between the] similar- ity [of] the trade marks and [that of the] goods or services. 16 Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity 26. I turn now to the question whether between the marks, and vice versa. Article 5(1)(b) may be applicable where The interdependence of these factors is there is a likelihood of association and the expressly mentioned in the 10th recital possibility of confusion cannot be ruled of the preamble to the Directive, which out. Such a construction of that provision is states that it is indispensable to give an to my mind untenable for the following interpretation of the concept of simi- reasons. larity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recogni-

15 — Set out in paragraph 4 above. 27. First, the language of the provision, and 16 — I have slightly reformulated this paragraph, since the English translation appears incorrect. of the Court when interpreting it, precludes

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30. More fundamentally, however, the test suggested by the Hoge Raad cannot in my view be reconciled with the standard of the average consumer which the Court has developed and which is to be applied when making the global assessment of the like- lihood of confusion which is required in order to determine whether Article 5(1)(b) is applicable. It is clear from the Court's case-law that, for that purpose, the average consumer must be taken to be reasonably 28. It may be added that the 10th recital well-informed, observant and circum- concludes with the words 'the ways in spect. 19 As noted by Marca Mode, it can which likelihood of confusion may be no longer be relevant that a minority of established, and in particular the onus of particularly inattentive consumers might proof, are a matter for national procedural possibly be confused. Community law has rules which are not prejudiced by the thankfully disempowered the consumer Directive', thus confirming the need to who confuses the mark 'LUCKY WHIP' establish a likelihood of confusion. 18 with the mark 'Schöller-Nucki'. 20

17 — Paragraph 18 of the judgment. 19 — Lloyd, cited in note 18, paragraph 26 of the judgment, and 18 — See also paragraph 11 of the judgment of the Court of the earlier case-law there referred to. 22 June 1999 in Case C-342/97 Lloyd Schuhfabrik v 20 — See paragraph 36 of my Opinion in Case C-10/89 HAG Klijsen. CF [1990] ECR-3711 ('HAG II').

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owners than the Court had considered it opposition proceedings, it seems essential appropriate to allow pursuant to the dero- that marks should be registrable in the gation from the principle of the free move- absence of a genuine and properly substan- ment of goods contained in Article 36 of tiated risk of confusion. the Treaty.

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tion' (Article 5(1)(b)) (although it may be 39. Marca Mode, the United Kingdom and noted that the 10th recital in the preamble Netherlands Governments and the Com- twice refers to 'the risk of confusion'). For mission all concur in the view that that that reason, paragraphs 18 and 22 of the question should be answered in the nega- judgment in SABEL are, in the Dutch tive. Marca Mode argues on the basis of the translation, couched in terms of possibility case-law of the Court, the legislative his- rather than likelihood, risk or danger; tory and scheme of the Directive and the understandably, the order for reference specific subject-matter of the mark. The and the question referred follow this usage. Netherlands Government considers that the In the context of the scheme and objectives issue is resolved by reference to the decision of the Directive, however, as discussed in SABEL v Puma, the wording of the above, I do not consider that any signifi- Directive and the function of trade marks. cance is to be attached to the different The Commission and the United Kingdom terminology used in the Dutch version of Government refer to the decisions in the Directive or of the judgment in SABEL. SABEL and in Canon.

have now been unequivocally dispelled by of confusion is a question of fact in each its judgments in Canon and in Lloyd. 31 In case, and in that context the fact that the those cases the Court was asked about the earlier mark is distinctive will often be weight to be given, in assessing the like- relevant for determining whether there is in lihood of confusion, to the fact that the fact a likelihood of confusion. A likelihood earlier mark is highly distinctive. It is clear of confusion must, however, exist in order from the answers it gave that the distinctive for Article 5(1)(b) to apply. It may be noted character of the earlier mark, and in that, as Marca Mode and the Commission particular its reputation, must be taken point out, the assumption that the like- into account when determining whether the lihood of confusion must be shown in the similarity between the goods or servics case of a distinctive mark clearly underlies covered by the two marks is sufficient to the judgment in Canon, 35 which concerned give rise to a likelihood of confusion 32 and a mark accepted as distinctive by virtue of that hence the more similar the goods or having a reputation. It may also be noted services covered and the more distinctive that the judgment in Canon was delivered the earlier mark, the greater will be the before the order for reference in this case likelihood of confusion. 33 Both those pro- was made. positions flow clearly, as the Court explained (and indeed had already explained in SABEL v Puma), from the wording of the 10th recital, which states 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, [on] the associa- tion which can be made with the used or registered sign, [on] the degree of similarity between the trade mark and the sign and between the goods or services identified'. 34

case is to be made on the basis of the against dilution, namely the blurring of the relevant facts, no principle of general distinctiveness of a mark such that it is no application could reasonably be deduced longer capable of arousing immediate asso- from that statement. The Court presumably ciation with the goods for which it is had in mind a concrete situation such as registered and used. 3 7To do so by a would arise, for example, from the use in creative interpretation of Article 5(1)(b) relation to records, cassettes, compact discs would run counter to the scheme of the or similar goods of a sign consisting of a Directive, which clearly envisages that such small dog listening to the trumpet of a additional protection should be conferred, phonogram. In such cases where the marks if at all, by virtue of Articles 4(4)(a) 38 and involved are marks with analogous seman- 5(2) at Member States' option: see the tic content, it will (as noted by the Nether- ninth recital in the preamble. 39 lands Government) evidently be easier to show a likelihood of confusion where the earlier mark has a particularly distinctive character than in a case such as SABEL v Puma where the earlier mark did not have a particularly distinctive character.

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Conclusion

47. Accordingly the question referred by the Hoge Raad should in my opinion be answered as follows:

1. Article 5(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 is not applicable unless there is a genuine and properly substantiated likelihood of confusion about the origin of the goods or services in question.

2. Where a trade mark has a particularly distinctive character and a third party, without the consent of the proprietor of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give rise to the possibility, risk or likelihood of its being associated with that mark, it is not sufficient, in order for Article 5(1)(b) of Directive 89/104 to apply, that the distinctive character of the mark is such that the possibility, risk or likelihood of such association giving rise to confusion cannot be ruled out.