C-23/01

ROBELCO

OPINION OF ADVOCATE GENERAL RUIZ-JARABO COLOMER delivered on 21 March 2002 1

1. This case seeks to establish whether First 'Robelco', on 20 November 1996 by two Council Directive 89/104/EEC of 21 De- investment companies. The objects of the cember 1988 to approximate the laws of company comprise, inter alia: the Member States relating to trade marks ('the Trade Mark Directive') 2 contains criteria for application of the provisions relating to protection against the misuse or unlawful use of a sign otherwise than for the purposes of distinguishing goods or services, within the meaning of Article 5(5) thereof. '— carrying out all forms of transaction directly or indirectly related to the purchase, sale, exchange, taking and granting on lease, construction, reno- vation, division into plots, manage- ment and development of all forms of immovable property; Facts

2. The facts which form the background to this case are set out in the order for reference and may be stated as follows. — granting loans with or without a mort- gage, financing property projects, provision of funding and services to undertakings and companies;

3. Robelco NV ('Robelco') was set up as a limited liability company (naamloze ven- nootschap), with the company name

1 — Original language: Spanish. — all forms of property transaction, 2 — OJ 1989 L 40, p. 1. including renting and leasing.'

I - 10916

ROBELCO

Relevant law 2. Any Member State may also provide that 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 Community law mark is registered, where the latter has a 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 6. Article 5(1), (2) and (5) of the Trade trade mark. Mark Directive provides:

'1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: 5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguish- ing goods or services, where use of that sign without due cause takes unfair advantage (a) any sign which is identical with the of, or is detrimental to, the distinctive trade mark in relation to goods or character or the repute of the trade mark.' services which are identical with those for which the trade mark is registered;

National law (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 7. Since 1971, the three States of the mark and the sign, there exists a Benelux Economic Union have been subject likelihood of confusion on the part of to the Uniform Law on Trade Marks. 3 the public, which includes the likeli- hood of association between the sign and the trade mark. 3 — See point 5, above.

(b) any use, in the course of trade, of the mark or a similar sign in respect of the goods for which the mark is registered or similar goods where there exists a risk of association on the part of the public between the sign and the mark; 2. any other use of the trade mark or a similar sign in the course of trade and without due cause which would be liable to be detrimental to the owner of the trade mark.' (c) any use, in the course of trade and without due cause, of a trade mark which has a reputation in the Benelux countries or of a similar sign for goods which are not similar to those for which the trade mark is registered, where use of that sign would take 9. The amended version of the Uniform unfair advantage of, or would be Law, transposing the Trade Mark Direc- detrimental to, the distinctive character tive, came into force on 1 January 1996. or the repute of the trade mark;

I - 10918

ROBELCO

(d) any use, in the course of trade and meaning of the abovementioned article without due cause, of a trade mark or require that confusion can arise as a of a similar sign other than for the consequence or is likelihood of associ- purposes of distinguishing goods, ation sufficient, in the sense that in the where use of that sign without due minds of those confronted by the trade cause takes unfair advantage of, or is mark and the sign one will suggest the detrimental to, the distinctive character other without any confusion resulting or the repute of the trade mark.' therefrom, or must no likelihood of association at all exist in that regard?'

The questions referred Arguments of the parties

the trade mark') and asserts that it is not restrictive interpretation of the powers of possible to infer any additional conditions, the Member States accords with the har- such as the likelihood of confusion or of monisation objective of the Directive. association raised by the referring court. 4 Otherwise, under Article 5(5), a sign with- out a reputation would be eligible for protection comparable to that afforded to a trade mark with a reputation under Article 5(2). 15. For its part, the focus of Robelco's argument is the distinction between the likelihood of confusion and the likelihood of mere association. Confusion exists where the public confuses the sign with 18. The Commission submits that the the trade mark (direct confusion) or con- Court should reply that the purpose of fuses the proprietor of the sign with the Article 5(5) of the Directive is to exclude proprietor of the trade mark (indirect from harmonisation certain forms of pro- confusion). Mere association exists where tection which are afforded under the legal the perception of the sign evokes the trade systems of the Member States, including mark but does not become confused with the p r o t e c t i o n p r o v i d e d for in it. Article 13A(l)(d) of the Uniform Benelux Law on Trade Marks.

16. Robelco agrees that Article 5(5) of the 19. The Commission starts from the prem- Directive is not a provision of trade mark iss that the referring court has described law. However, Robelco asserts that mere correctly the facts of the dispute — con- similarity is not sufficient and that, in order flict between the proprietor of a trade mark to activate the special type of protection and the proprietor of a company name, concerned, the sign must be identical to the where there is no similarity between the trade mark. To find otherwise would mean goods or services concerned — as being that it would be necessary to prove in each the use of a sign otherwise than for the case that there exists a likelihood of purposes of distinguishing goods or ser- confusion. vices, from which it follows that Article 5(5) is material.

22. The Hof van Beroep seeks guidance on what degree of similarity between a sign and a trade mark is required to trigger the application of Article 5(5) of the Directive (first question) and on whether, for the same purposes, that similarity must be 26. That is the essential purpose of trade accompanied by a likelihood of confusion mark law: to protect the accuracy of the or of association (second question). information which a registered sign pro- vides about the commercial origin of spe- cific goods.

23. The doubts harboured by the national court do not stem from the wording of the Directive but rather from uncertainty about 27. Article 5(2) extends that protection to whether the provision was transposed cor- trade marks which have a reputation in a rectly into Benelux law and about whether particular territory by permitting Member the legal practices developed prior to the States to prohibit, in such cases, the use of a entry into force of the Directive continue to similar sign, even if there is no connection apply. between the goods or services, where there

I - 10921

OPINION OF MR RUIZ-JARABO — CASE C-23/01

is an attempt to take unfair advantage of 30. It is important, however, in the sphere the repute of the trade mark or where there of trade marks, to delimit the boundary is a likelihood of detriment to its propri- which separates the scope of application of etor. In that way, both the right of the Community law from that of national law. public to be informed about the precise That boundary does not embody an origin of the goods marketed to them and attempt on the part of the Community the right of the trade mark proprietor to legislature to separate trade mark law in protect its goodwill are safeguarded. the strict sense from other related disci- plines, because it is well-known that the approximation of laws is not complete.5

I - 10922

ROBELCO

sion in the Benelux Uniform Law. 6 Where would require an assessment of the practi- a sign is not used, directly or indirectly, cal effects of the different types of conduct subliminally or unintentionally, to identify concerned, rather than of predetermined goods or services, I fail to see what categories. 8 relevance it can have to trade for the purposes of trade mark law. The fact that the sign concerned is not used as a trade mark in the formal sense is another matter. If Article 5(5) were interpreted in that way, 34. The situation where a sign is used it could, for example, be relied on to otherwise than for the purpose of distin- exclude from harmonisation provisions of guishing the origin of goods or services is national law governing comparative adver- not covered by Article 5(1), which refers to tising or the misuse of company names. 7 the identification of goods and services, and is instead specifically caught by the reser- vation in favour of the legislatures of the Member States laid down in Article 5(5). That area is outside the scope of the Directive, which, furthermore, and for the avoidance of any doubt, confers on the Member States the power to legislate on such matters.

I - 10923

OPINION OF MR RUIZ-JARABO — CASE C-23/01

ditional on any other requirement. The 39. Second, although it is true that, for provision makes no reference at all to the Article 5(1) and (2) of the Directive to degree of similarity which the sign must apply, there must be a certain degree of display in relation to the trade mark. That similarity between the two signs concerned, being the case, it is clear that the Member it is equally true that the rationale of States may adopt no legislation at all in that Article 5(5) is different, so that there are regard; alternatively, they may require a no grounds for transposing to the scope of sign and a trade mark to be identical, they provisions on trade mark protection, in the may determine that similarity, however case of use of signs otherwise than for the minimal, will suffice, or equally they may purpose of distinguishing goods, elements specify any other conceivable connection. which are justified on the basis that they do perform that function.

37. There is no need to go into the silence in the legislation as to the nature of the 40. Finally, for similar reasons, it is not connection between the sign concerned and appropriate to compare the powers con- the trade mark, as the referring court ferred on Member States under Article 5(2) would wish. Nor is it appropriate to trans- with those referred to in Article 5(5), pose to paragraph (5) the wording of the because the latter only apply to the previous paragraphs of Article 5, or to restricted sphere of use of a sign otherwise compare its scope with that of paragraph than for the purposes of distinguishing (2), as Robelco claims. goods and services.

I - 10925