C-292/00

DAVIDOFF

OPINION OF ADVOCATE GENERAL JACOBS delivered on 21 March 2002 1

1. Under the Trade Marks Directive, 2the 3. In the present reference for a preliminary proprietor of a valid trade mark must be ruling, the German Bundesgerichtshof entitled to prevent a third party from using (Federal Court of Justice) wishes to know, a sign or registering it as a mark if either (a) essentially, (a) whether Member States may the sign is identical to his earlier mark and also accord such additional protection in the goods or services in question are cases where the relevant goods or services identical to those for which that mark is are identical or similar, but there is no protected or (b) it is identical or similar to likelihood of confusion, and/or (b) whether the earlier mark, the goods or services the only cases in which the additional covered are also identical or similar and protection may be granted are those in there is a likelihood of confusion on the which the use of the sign would take unfair part of the public. advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, or whether other national rules — perhaps those concerning unfair compe- tition — may also be applied.

affect the functioning of the internal mar- (b) if because of its identity with, or ket. 3 Registered trade marks must there- similarity to, the earlier trade mark fore enjoy the same protection in all and the identity or similarity of the Member States, although the latter may goods or services covered by the trade still grant 'extensive protection to those marks, there exists a likelihood of trade marks which have a reputation'. 4 confusion on the part of the public, The basic protection afforded — the func- which includes the likelihood of associ- tion of which is in particular to guarantee ation with the earlier trade mark. the trade mark as an indication of origin — is absolute in the case of identity between the mark and the sign and goods or services, but applies also in the case of similarity between the mark and the sign and the goods or services, in which case likelihood of confusion is the specific condition for such protection. 5

4. Any Member State may furthermore provide that a trade mark shall not be 5. Article 4 provides, in so far as is registered or, if registered, shall be liable to relevant: be declared invalid where, and to the extent that:

' 1 . A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: (a) the trade mark is identical with, or similar to, an earlier national trade mark... and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where (a) if it is identical with an earlier trade the earlier trade mark has a reputation mark, and the goods or services for in the Member State concerned and which the trade mark is applied for or where the use of the later trade mark is registered are identical with the without due cause would take unfair goods or services for which the earlier advantage of, or be detrimental to, the trade mark is protected; distinctive character or the repute of the earlier trade mark;

(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; 7. It appears from the Commission's obser- va t i o n s t h a t t h e p r o v i s i o n s of Articles 4(4)(a) and 5(2), although optional under the Directive, have in fact been implemented by all the Member States. (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 the sign, there exists a likelihood of confusion on the part of the public, which includes the likeli- hood of association between the sign and the trade mark. 8. Articles 4 and 5 both contain provisions under which aspects of national law as it stood prior to transposition of the Directive may continue to have effect after trans- position. Under Article 4(6), a Member State may provide that the grounds for 2. Any Member State may also provide that refusal of registration or invalidity in force the proprietor shall be entitled to prevent prior to the date of transposition of the all third parties not having his consent from Directive are to apply to trade marks using in the course of trade any sign which applied for before that date. And under is identical with, or similar to, the trade Article 5(4) it may provide that, where the mark in relation to goods or services which use of a sign could not be prohibited before are not similar to those for which the trade the date of transposition, the rights con- mark is registered, where the latter has a ferred by a (subsequent) trade mark may

12. According to the judgment making the reference, before 1995 it was possible under the relevant provisions of the Waren- zeichengesetz, read in conjunction with 10. Prior to the transposition of the Direc- those of the Gesetz gegen den unlauteren tive, the German Trade Mark Law was Wettbewerb (Law prohibiting unfair com- known as the Warenzeichengesetz; that has petition), for a trade-mark proprietor to now been replaced by the Markengesetz, prevent the use or registration of a sign which came into force on 1 January 1995. 7 similar to his mark where the latter was Paragraph 9(1 )(1) to (3) of the Markenge- well known in the relevant sections of the public, enjoyed a particular reputation and prestige value and was therefore very valu- 6 — Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, OJ 1994 L 11, p. 1, hereinafter able to him, if the sign was deliberately, 'the Regulation'. and without any overriding necessity, made 7 — Although the provisions of the Directive had to be implemented by 31 December 1992 at the latest (Article 16). to resemble the earlier mark.

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The proceedings bacco; smokers' articles; matches'. The former are apparently marketed principally by Davidoff & Cie SA, the latter — in particular cigars — by Zino Davidoff SA.

13. Davidoff & Cie SA and Zino Davidoff SA (together 'Davidoff') are two linked Swiss companies in whose names the trade mark 'Davidoff' is registered inter- nationally, as a figurative mark in an 15. Gofkid Ltd ('Gofkid') is a Hong Kong underlined script based on, but slightly company which owns a German-registered differentiated from, a standard type of font figurative trade mark, dating from 1991 9 known as 'English 157' (or 'Englische and consisting of the word 'Durffee' in Schreibschrift' in German): English 157 script (again slightly modified), but not underlined, preceded by two capital 'D's — a smaller one inset in the upper right-hand corner of a larger one — in a plainer style. It again covers, inter alia, goods in classes 14 and 34, and takes the following form:

18. The Bundesgerichtshof, having exam- ined Articles 4(4)(a) and 5(2) of the Direc- tive, considers that further guidance is required as to their interpretation. On their wording, those provisions apply only where there is no similarity between the goods or services concerned, but that interpretation might be disputed — it would seem more, rather than less, important to prevent undue advantage being taken of well- known marks where the supplies in ques- tion are similar than where they are not. It 17. Davidoff was unsuccessful in its action, might be relevant in that regard that, in both at first instance and on appeal, and determining whether there is a likelihood of now seeks review on a point of law by the confusion, a lower level of similarity Bundesgerichtshof. In the judgment making between the marks can be offset by a the reference, that court considers (dis- higher level of similarity between the goods agreeing with the appeal court below it) for which they are used and vice versa. 1 1If that the two marks are clearly similar but the provisions are to be interpreted lit- that further findings of fact are required in erally, the question arises whether they order to determine correctly whether there limit continued protection of well-known is a likelihood of confusion between them. marks under national law to the grounds However, it finds also that under the they mention, or whether they permit pre-1995 German legislation 10 Davidoff supplementary national provisions (par- would have been entitled on the facts ticularly against unfair competition) to established to prevent the use of the protect well-known marks against later 'Durffee' mark, even without a likelihood signs which are used or intended to be used of confusion; it cannot now be so entitled, for identical or similar goods. though, unless it may also do so under the

'(1) Are the provisions of Article 4(4)(a) and Article 5(2) of First Council Direc- The first question tive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) to be interpreted (and where appropriate applied) as also entitling the Member States to provide Scope more extensive protection for marks with a reputation in cases where the later mark is used or to be used for goods or services identical with or 21. Davidoff has queried the import of the similar to those in respect of which Bundesgerichtshofs first question, suggest- the earlier mark is registered? ing that it may be imprecisely worded. The question should, it considers, be read as asking whether Member States may grant more extensive protection to marks having a reputation where the products in question are similar but there is no similarity between the two marks — or between the sign and the mark, as the case may be.

(2) Are the grounds mentioned in Articles 4(4)(a) and 5(2) of the Trade Mark Directive (use which without due cause takes unfair advantage of, or is 22. That is not in my view a correct detrimental to, the distinctive character interpretation of the question. or repute of the earlier mark) exhaus- tive in regulating when it is permissible for provisions protecting marks with a reputation to be retained under national law, or may those articles be 23. It is true that the judgment making the supplemented by national rules pro- reference evokes the possibility that tecting marks with a reputation against Articles 4(4)(a) and 5(2) of the Directive later signs which are used or to be used might allow protection to be granted where in respect of identical or similar goods a lack of likelihood of confusion stems or services?' from lack of similarity between marks as

Substance 24. The first question must therefore be read in that light as asking whether the more extensive protection authorised by Articles 4(4)(a) and 5(2) may be granted 26. Davidoff, the Portuguese Government where the goods or services in question are and the Commission all broadly take the similar, as well as where they are not. There view, to which the national court itself does not appear to me to be any reason to seems inclined, that Articles 4(4)(a) and suppose that the Bundesgerichtshof also 5(2) of the Directive, since they allow a needs or wishes to know, in order to decide trade mark having a reputation to be the case before it, whether the criterion of protected against the use of similar marks similarity between products and that of or signs for products which are not similar similarity between marks, or between mark to those for which the mark is registered, and sign, may be substituted for each other must also, a fortiori, allow such protection in the interpretation of those provisions — where products are similar. Gofkid and the although that might have been the case if it United Kingdom Government, however,

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argue on a number of grounds for a stricter 29. Yet there seems to be no provision for interpretation of those provisions; in par- the case where the competing mark or sign ticular, they submit, the wording is clearly is similar to the mark having a reputation circumscribed and it is neither necessary and its use — for products which are nor desirable to extend further the pro- similar to those covered by that mark — tection already authorised. is without due cause and takes unfair advantage of or is detrimental to the latter's distinctive character or repute, unless there is a likelihood of confusion. If protection may be granted in comparable circum- stances, despite the absence of any likeli- hood of confusion, where the products arc not similar, surely the legislature cannot have intended to exclude such protection where they are?

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tion afforded by Article 5(2) as applying 32. First and foremost in that context, 'even when' marks are used for non-similar there is considerable force in the arguments products. put forward by Gofkid and the United Kingdom Government as to the clarity of the literal wording of the provisions in question.

33. Articles 4(4)(a) and 5(2) of the Direc- tive explicitly relate to signs or marks used for 'goods or services which are not similar to those for which the [earlier] trade mark is registered', without any qualification 31. However, the use of 'even where/when' such as 'even' or 'including'. Nor is there in those passages need not necessarily be any indication in the preamble of an taken to mean 'including cases where', that intention that the provisions should be is to say 'in cases where products are interpreted to include goods or services similar and also in cases where they are which are similar. not'. It might also be seen as stressing the difference which was highlighted by the Court in Canon: 'In c o n t r a s t to Article 4(4)(a), which expressly refers to the situation in which the goods or services are not similar, Article 4(l)(b) provides that the likelihood of confusion presupposes 34. Where a legislative provision is clear, it that the goods or services covered are is in principle unnecessary and undesirable identical or similar.' 14 Moreover, those to look behind the terms adopted. That statements were not findings of law under- having been said, however, in the present pinning the rulings in the two cases in case the drafting history of the Directive ·— question but rather commentaries on which is closely linked to that of the related points; in neither case was the use Regulation — tends to support a literal of the word 'even' by the Court germane to interpretation. the matter under consideration. The point raised in the present case has not yet been specifically considered by the Court 15and I think it desirable to examine it rather more closely.

registration or use in respect of identical or the protection in question should extend to similar goods. An exception for trade use for both similar and dissimilar goods, marks having a reputation appeared in the the legislature chose a form of words which Regulation alone but was confined to referred to dissimilar products alone. That, actual use of a conflicting sign or mark 'in coupled with the fact that the provisions relation to goods or services which are not were added at a late stage, in derogation similar'. That was extended, in the text from the basic intention to give protection finally adopted, to cover protection against only where identical or similar products registration of a conflicting Community were concerned, militates in favour of a trade mark in the same circumstances, but literal interpretation. neither the original nor the amended 17 proposal for a Directive contained any such provision. The reason for that deliberate omission was given in the explanatory memorandum; 18 it was intended that owners of trade marks having a reputation who wanted wider protection should obtain it through registration as a Commu- 37. In those circumstances, it seems clear nity trade mark. that the legislature meant precisely, and no more than, what it said. Only a particularly powerful argument may in my view justify any interpretation at odds both with that intention and with the clear terms of the legislation.

40. One limb of the United Kingdom's principle precluding a likelihood of con- argument is that, if the use of a similar fusion. 21 Yet even in such cases, despite mark or sign for dissimilar products is first appearances, there may well be a without due cause and takes unfair advan- likelihood of confusion. If so, marks having tage of, or is detrimental to, the distinctive a reputation will benefit in the same way as character or the repute of an earlier trade any other mark and there appears to be no mark having a reputation, then its use for reason to accord them a duplicate, optional similar products will normally give rise to a protection under Article 4(4)(a) or 5(2). If likelihood of confusion falling within not, however, does that mean that such Article 4(1)(b) or 5(1)(b) of the Directive. marks will in those circumstances fall unprotected between the two stools of, on the one hand, Articles 4(1) and 5(1) and, on the other, Articles 4(4)(a) and 5(2)?

41. However, although that may well often be the case, to consider it always to be so seems to come dangerously close to assum- ing that, where a trade mark has a repu- tation, likelihood of confusion may always 43. I think not. It is not in my view difficult be inferred if a similar mark is used for to interpret those provisions as providing a similar products. That possibility was dis- continuum of protection, without going missed by the Court in Marca Mode 20 beyond their literal terms. where there is a likelihood of association, a finding which must be all the more valid where there is none.

45. Articles 4(1) and 5(1) provide protec- tion over a range of situations, progressing from that of absolute identity both between products and between marks or mark and sign to that of mere similarity in both regards. Where there is no similarity at all between marks, or between mark and sign, then it seems clear, as I have stated above, that there are no grounds for allowing the owner of a protected mark to prevent the use of another mark or sign, whatever the degree of similarity or dissimilarity between the products in question. There can be no extension of the range of 47. Yet in addition to being optional for protection in those circumstances. the Member States and confined to trade marks having a reputation, the protection afforded by Articles 4(4)(a) and 5(2) is dependent on different criteria. 23 On the one hand, it is no longer necessary to show any likelihood of confusion but, on the other, it must be established that the use of the competing mark or sign is without due cause and would take unfair advantage of, 46. Where however an identical or similar or be detrimental to, the distinctive char- mark or sign is used in respect of dissimilar acter or the repute of the protected products, there may be situations in which mark — criteria which need not be satis- protection is justified. Such situations will fied where products are similar. Thus, it- concern above all marks which enjoy a seems to me that there is no gap in the reputation in themselves rather than those continuity of protection for marks having a which function only as a guarantee of reputation but rather that, where it extends

beyond the point of similarity between 49. Proponents of the 'gap' theory might products (at which point protection for have in mind a situation such as the other marks ceases completely), the criteria following. If the sign 'Coca-Cola', or a sign to be met change. similar to it, were to be used by a third party for an industrial lubricant, 27 the Coca-Cola Company would be able to prevent such use on the basis of Article 5(2) of the Directive if, as seems likely, there were no justifiable reason for using that mark for that product and if, as again seems plausible, its use took unfair advantage of, or was detrimental to, the repute of 'Coca-Cola'.

marks. In SABEL,24 the Court considered that the existence of such a distinctive character increased the likelihood of con- fusion. Thus such likelihood, although it must always be assessed on the basis of evidence presented to the national court, 25 50. But the answer lies in the interpretation will be easier to establish even when the given by the Court in SABEL, Canon and degree of similarity between the products Marca Mode, as outlined above. Whilst the concerned is more tenuous. Again, the two products might not be easily confused protection afforded to marks with a repu- in themselves, the reputation of the 'Coca- tation extends beyond that afforded to Cola' mark in relation to bottled beverages other marks and reinforces the bridge over may be such that the public might believe what might otherwise have been perceived that they came from the same undertaking as a gap. 2 6 or from economically-related undertak- ings, 28 although of course that would be a matter of fact to be assessed on the 24 — Cited above in note 12, at paragraph 24 of the judgment. See also paragraph 18 of the judgment in Canon, cited above in note 11 and paragraph 41 of Marca Mode, cited 2 7 — Class 4 in the Nice Classification:

Marca Mode.

53. I thus reach the view that the wording 51. Thus, although there may be an area in of the Directive is clear and that there is no which a trade mark having a reputation is compelling reason to interpret it in a not protected against the use of identical or manner contrary to its clear meaning. similar marks or signs — namely where the products in question are similar and there is no likelihood of confusion — the very definition of that area means that it is likely to be insignificant in practice, and its extent is still further limited by the Court's case-law. In deliberately not providing for that area, moreover, the legislature may well have been expressing its intention that likelihood of confusion should be the 54. In reaching that view, it is not necess- normal criterion for protection. It may also ary to consider whether, on balance, it have had in mind that the area of dissimilar would be preferable for the protection in products is one in which dishonest oper- issue to cover also cases where the products ators might well take unfair advantage of a in question are similar. Such an analysis is a well-known mark unless extra protection is matter for the legislature. However, on the granted, whereas it would be considerably one hand, I have already pointed out the more difficult to take such advantage in the attraction of an a fortiori approach and yet, area of similar products without giving rise on the other, Gofkid and the United to a likelihood of confusion. Kingdom have argued that such an inter-

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58. I therefore conclude on the first ques- 60. Davidoff's reasoning is based essen- tion that the optional protection specified tially on the third and ninth recitals in the in Articles 4(4)(a) and 5(2) of the Directive preamble to the Directive: 'it does not relates only to situations in which the appear to be necessary at present to under- goods or services in question are not similar take full-scale approximation of the trade to those for which the (earlier) trade mark mark laws of the Member States and it will is valid. Where goods or services are be sufficient if approximation is limited to similar, the national court must examine, those national provisions of law which in the light of the Court's case-law concern- most directly affect the functioning of the ing the protection enjoyed by marks with a internal market'; 'it is fundamental, in highly distinctive character, whether there order to facilitate the free circulation of exists a likelihood of confusion. goods and services, to ensure that hence- forth registered trade marks enjoy the same protection under the legal systems of all the Member States;... this should however not prevent the Member States from granting at their option extensive protection to those trade marks which have a reputation'. In Davidoff's view, the Directive was thus drafted to lay down compulsory rules only for cases where there is a likelihood of confusion, leaving any further protection to be dealt with by the Member States at their discretion. The second question

62. It therefore seems clear that the legis- lature intended the more extensive optional protection to be confined to that set out in the relevant enacting terms. Indeed, had that not been the case, there would have been little purpose in specifying any details 65. Admittedly in its reasoning the Bun- at all of the protection which might be desgerichtshof indicates that its second accorded under Articles 4(4)(a) and 5(2). question concerns in particular whether As matters stand, those provisions lay supplementary national provisions relating down very clearly the limits of the dis- to protection against unfair competition are cretion available to the Member States. authorised; and the Directive, according to the sixth recital in its preamble, '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 protection'.

63. In that context, it is again important to note that registration of a Community trade mark may be defeated by the exist- ence of a prior right in any one of the Member States. If each Member State were free to enact the additional protection it chose, there would be a very great danger 66. However — quite apart from the fact indeed of seeing the whole edifice of the that the national court's question is not Community trade mark system set at specifically directed to that aspect, which nought, together with the harmonising has not moreover been addressed in the aim of the Directive itself, which is to submissions to the Court — it seems to me prevent barriers to trade and distortion of that it is with a certain kind of unfair competition in the interest of the internal competition that Articles 4(4)(a) and 5(2) market. 30 are intended to deal. In line with the sixth

The optional protection specified in Articles 4(4)(a) and 5(2) of Council Directive 89/104/EEC relates only to situations in which the goods or services in question are not similar to those for which the (earlier) trade mark is valid. Where goods or services are similar, the national court must examine, in the light of the Court's case-law concerning the protection enjoyed by marks with a highly distinctive character, whether there exists a likelihood of confusion in accordance with Articles 4(1) or 5(1), as the case may be.

The grounds specified in Articles 4(4)(a) and 5(2) on which such optional protection may be granted are exhaustive and may not be supplemented by national rules protecting well-known marks against later signs which are used or to be used in respect of identical or similar goods or services.

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