C-291/00

OPINION OF MR JACOBS — CASE C-291/00

O P I N I O N O F ADVOCATE GENERAL JACOBS delivered on 17 January 2002 1

1. Under Article 5(l)(a) of the Trade Marks Legislative background Directive 2the proprietor of a registered trade mark may prevent third parties from using in the course of trade any sign which is identical with the trade mark in relation to goods or services identical with those for which it is registered. The Tribunal de Grande Instance (Regional Court), Paris, Community legislation wishes to know whether for that purpose a sign may be considered identical with a trade mark (a) if it reproduces only the distinctive element of the mark or (b) if it 2. Article 4(1) of the Directive provides: reproduces the whole of the mark with the addition of other signs.

'A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(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 protected;

1 — Original language: English. (b) if, because of its identity with, or 2 — First Council Directive 89/104/EEC of 21 December 1988 similarity to, the earlier trade mark to approximate the laws of the Member States relating to trade marks, OJ 1989 L 40, p. 1, hereinafter 'the Directive'. and the identity or similarity of the I - 2802

5. In addition, although they are not directly in issue here, it may be noted that Articles 8(1)(a) and (b) and 9(1)(a) and (b) (b) any sign where, because of its identity of the Community Trade Mark Regu- with, or similarity to, the trade mark lation 3 contain provisions substantially and the identity or similarity of the identical to those of, respectively, goods or services covered by the trade Articles 4(1)(a) and (b) and 5(1)(a) and mark and the sign, there exists a (b) of the Directive. likelihood of confusion on the part of the public, which includes the likeli- hood of association between the sign 3 — Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, OJ 1994 L 11, p. 1, hereinafter and the trade mark.' 'the Regulation'.

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6. Thus, a trade mark is basically accorded 9. Article L.713-3 provides: absolute protection only against other marks or signs which are identical to it and used in respect of products which are identical to those for which it is registered; otherwise a likelihood of confusion must also be established. 'Save where the owner has consented, the following shall be prohibited if there is a risk that they might lead to confusion in the mind of the public:

French legislation

(a) the reproduction, use or affixing of a mark, or the use of a mark which has been reproduced, in respect of goods or services similar to those for which the 7. In France, the law on trade marks is mark is registered; codified in the Code de la Propriété Intel- lectuelle (Intellectual Property Code).

Proceedings 13. LTJ Diffusion objects to SADAS's use of the mark 'Arthur et Félicie', which it considers to infringe its own mark 'Arthur', just as it has objected to other trade marks including that name. It has successfully opposed the registration in France, by another company, of the trade mark 'Arthur et Nina' for clothing, footwear and headgear, and its opposition to the regis- 11. LTJ Diffusion is a French company tration requested by SADAS of 'Arthur et which produces and sells various items of Félicie' as a Community trade mark is clothing and the like under the trade name currently pending before a Board of Appeal 'Arthur', which is registered in France (and within the Office for Harmonisation in the also internationally for certain countries) as Internal Market (trade marks and designs) a figurative trade mark in a distinctive, (hereinafter 'the OHIM'). However, its handwritten form, with a dot below the objections to the registration as Commu- initial 'A', for goods of class 25 in the Nice nity trade marks of two other figurative classification 5 (clothing, footwear and marks including the word 'Arthur' have headgear). It uses that name to identify been dismissed by the First Board of Appeal both the articles and the outlets in which since the introduction of the present pro- they are sold. ceedings. 6

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distinctive element of a complex mark is 16. Written observations have been sub- reproduced or in which either that distinc- mitted by the parties to the main proceed- tive element or the whole mark is repro- ings, the United Kingdom Government and duced together with additions which are the Commission, all of whom, together deemed not to affect its identity. 8SADAS with the French Government, presented impugns that interpretation as inconsistent oral submissions at the hearing. with the terms of the Directive.

15. The national court has stayed the proceedings and requests a preliminary Analysis ruling on the following question:

Scope and context of the question 'Does the prohibition in Article 5(1)(a) of Directive 89/104 of 21 December 1988 to approximate the laws of the Member States cover only identical reproduction, without — The Directive addition or omission, of the sign or signs constituting a mark or can it extend to:

17. As framed, the national court's ques- tion relates exclusively to the right of the (1) reproduction of the distinctive element proprietor of a national trade mark to of a mark composed of a number of prohibit the use of a sign identical to that signs? trade mark in relation to goods or services identical to those for which it is registered (Article 5(1)(a) of the Directive).

19. The answer to the national court's specific question is also relevant to the grounds on which registration of a trade mark may be refused or declared invalid — The Regulation under Article 4(1)(a), since the criterion of identity — between marks, or between mark and sign — is common to both contexts and the scheme of the Directive calls for a uniform interpretation. (I would stress that the notion of identity to be examined concerns only that between marks, or between mark and sign; when determining identity between goods or 21. In addition, as mentioned above, the services — an issue which is not raised in Community Trade Mark Regulation uses, this case — different considerations may in Articles 8(1)(a) and 9(1)(a), the same be relevant.) criterion as appears in Articles 4(1)(a) and 5(1 )(a) of the Directive and in exactly equivalent contexts. However, LTJ Dif- fusion, having regard to decisions taken by the OHIM, submits that the two sets of provisions should be interpreted differ- ently.

20. However, the Court's ruling will affect neither the right to prohibit use of an

9 — See, for example, with specific regard Co the Directive, Case 22. It argues essentially, first, that the C-3J5/96 Silhouette International Schmied [1998] ECR I-4799, paragraph 36 of the judgment. OHIM cannot be recognised as having

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authority to bind national courts, second, manner — as it clearly did in the field of that in general directives and regulations trade marks — the presumption is very cannot be interpreted in the same way strong indeed that the two measures are because they differ in nature and in the intended to be interpreted in the same way. circumstances of their application and, The fact that they will be applied in third, that a directive whose aim is only different legal and factual circumstances partial harmonisation of national laws, does not detract from that presumption. allowing scope for differences of approach, cannot be interpreted in the same way as a regulation whose aim is to set up a single, uniform, Community regime.

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LTJ DIFFUSION

out the Community against those using 30. The relevant circumstances are there- identical or similar signs, it is clear that the fore those in which a sign and a registered functioning of the internal market would be trade mark, or two registered marks, are severely undermined if the rights conferred used in relation to identical goods or in each case were to differ to any significant services, with the consequence that the extent. proprietor of the (earlier) mark may exer- cise his rights in accordance with the Directive without having to prove any likelihood of confusion on the part of the public. In those circumstances, what is required to establish that the mark and sign, or the two marks, are identical rather than merely similar?

28. In principle, therefore, I am of the view that the relevant parallel provisions of the Directive and the Regulation fall to be interpreted in the same way.

Meaning of 'identical'

— Concluding remarks on scope and con- text 31. The principles seem clear.

33. Articles 4(1)(a) and 5(1)(a) of the The rights conferred on the proprietor Directive confer unconditional rights on under Article 3(1) applied where marks trade-mark proprietors where the relevant and signs, and goods or services, were elements are all identical; Articles 4(1)(b) identical or similar and where there was 'a and 5(1)(b) confer rights dependent on the serious likelihood of confusion' on the part existence of a likelihood of confusion of the public. It was in 1985 that the where some elements are merely similar. amended proposal 15 removed the con- The 10th recital in the preamble makes it dition of a likelihood of confusion in the clear that trade-mark protection is intended case of identity, following, in particular, to be absolute in the case of identity but the Opinion of the Economic and Social that likelihood of confusion is the specific Committee 16 which had pointed out: 'A condition for the protection to apply in the danger of confusion is not required for the case of similarity. Such absolute, uncon- use of an identical mark to be prohibited... ditional protection — which, as the Com- As far as similar signs are concerned, it is in mission points out, leaves little or no the interests of all economic operators to discretion to the national courts — should focus on the likelihood of confusion in the clearly not be extended beyond those course of trade....' 17 situations for which it was intended if the aim of ensuring freedom of trade and undistorted competition in the internal market is to be achieved. 13

38. Where however there is similarity rather than identity, it is reasonable to limit the rights of the trade-mark proprietor to cases where a likelihood of confusion can be established since, in its absence, 41. Clearly, absolute identity in every their assertion would constitute a restric- detail is covered by Articles 4(1)(a) and tion on freedom of trade and competition 5(1)(a). And in principle, any difference, lacking any basis in the fundamental trade whether it might be viewed as adding, mark law aim of ensuring that a particular removing or modifying any element, must mark unambiguously identifies a particular involve loss of identity. provenance. 19

39. Thus I take the view that the protection 42. Yet it has been rightly stressed in the afforded to trade-mark proprietors under observations to the Court that there may be slight differences between trade marks so that the two are not rigorously identical 19 — For a rather fuller statement of that aim see, for example, Case C-10/89 HAG GF ('HAG II') (1990) ECR I-3711, with, but none the less remain difficult to paragraphs 13 and 14 of the judgment. distinguish from, each other.

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46. Taking account of all those points, I am of the view that the Court should follow with regard to identity the path traced with regard to similarity in particular by its case-law in SABEL 22 and Lloyd, 23 con- centrating on the need for a global assess-

21 — I have touched on it, in somewhat different circumstances, 45. However, citing a number of English in paragraph 56 of my Opinion of 20 September 2001 in Case C-2/00 Hölterhoff, referring there to the final phrase and Scottish examples to illustrate its point, of Article 6(1) of the Directive and to Article 3a(1)(h) of the United Kingdom has warned the Court Council Directive 84/450/EEC of 10 September 1984 relating to the approximation of the laws, regulations and against giving a ruling in the present case administrative provisions of the Member States concerning misleading advertising, OJ 1984 L 250, p. 17, as amended which might have unforeseen implications by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997 amending Directive 84/450/EEC concerning misleading advertising so as to include comparative advertising, OJ 1997 L 290, p. 18. 20 — Although from what the French Government said at the 22 — Case C-251/95 SABEL [1997] ECR I-6191, paragraphs 22 hearing, that line of case-law .appears to have been and 23 of the judgment. superseded by a tendency towards a stricter interpretation 23 —Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR of the concept of identity. I-3819, paragraphs 18, 25 and 26 of the judgment.

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LTJ DIFFUSION

49. The national court should therefore first identify what it is that is perceived by the average, reasonably well-informed, observant and circumspect consumer as the relevant marks, or the relevant mark and sign, then perform the global assess- 47. Thus a mark and a sign, or two marks, ment described above in order to determine will always be identical where in the light whether the two are likely to be perceived of such an assessment any differences are as the same or merely similar. In the former minute and wholly insignificant, so that the case, the trade mark proprietor's rights will average consumer would not find any be automatically enforceable whereas, in noticeable difference between the two; the latter, it will be necessary to investigate otherwise, they can be regarded as no more further whether there is a likelihood of than similar. confusion.

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OPINION OF MR JACOBS — CASE C-291/00

50. It is not for this Court to apply that the registration or use of the contested approach to the facts of the case in the sign. 24 main proceedings, since the assessment in question may require specific familiarity with national circumstances. However, I suggest that the reproduction of LTJ Dif- fusion's trade mark 'Arthur' in the same distinctive script but without the dot under the initial 'A' might well have been per- ceived by the average consumer as identical to the original (the change being minute and wholly insignificant), whereas the use of a noticeably different script and/or the addition of another name might be seen as only similar (such changes, at least taken together, being substantial).

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LTJ DIFFUSION

Conclusion

53. In the light of the above considerations, I am of the opinion that the Court should give the following answer to the Tribunal de Grande Instance, Paris:

The concept of identity between mark and sign in Article 5(l)(a) of Council Directive 89/104/EEC covers identical reproduction without any addition, omission or modification other than those which are either minute or wholly insignificant.

In reaching its decision in such cases, the national court must first identify what is perceived by the average, reasonably well-informed, observant and circumspect consumer as the relevant mark and sign, then assess globally the visual, aural and other sensory or conceptual features of the mark and sign in question and the overall impression created by them, in particular by their distinctive and dominant components, in order to determine whether the two would be perceived by such a consumer as the same in the sense that any differences are minute or wholly insignificant, or whether the two would be perceived rather as similar in the sense that the differences are greater than that.