C-408/01

OPINION OF MR JACOBS — CASE C-408/01

OPINION OF ADVOCATE GENERAL JACOBS delivered on 10 July 2003 1

1. In this case the Hoge Raad der Neder- '1. The registered trade mark shall confer landen (Supreme Court of the Netherlands) on the proprietor exclusive rights therein. has referred a series of questions on the The proprietor shall be entitled to prevent interpretation of Article 5(1) and (2) of the all third parties not having his consent from Trade Marks Directive. 2 using in the course of trade:

(a) any sign which is identical with the 2. At issue in particular is Article 5(2), trade mark in relation to goods or under which Member States may provide services which are identical with those protection for the proprietor of a trade for which the trade mark is registered; mark with a reputation against use by another party of a similar sign which 'takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark'. (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 The Trade Marks Directive and the trade mark.

3. Article 5 of the Directive provides in so far as relevant: 2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from 1 — Original language: English. using in the course of trade any sign which 2 — First Council Directive 89/104/EEC of 21 December 1988 is identical with, or similar to, the trade to approximate the laws of the Member States relating to trade marks, OJ 1989 L 40, p. 1. mark in relation to goods or services which I - 12540

4. It may be noted that Article 4(1) of the 7. Adidas-Salomon AG is the owner of a Directive provides that a trade mark is not figurative trade mark formed by a motif to be registered or, if registered, is liable to consisting of three stripes which is regis- be declared invalid if, essentially, it satisfies tered as a Benelux mark for a number of the same conditions as those set out in types of clothing. Adidas Benelux BV is Article 5(1) in relation to a sign, and that Adidas AG's exclusive licensee for the under Article 4(4)(a) Member States may provide that a trade mark is not to be registered or, if registered, is liable to be 3 — Council Regulation (EC) No 40/94 of 20 December 1993 on declared invalid if, essentially, it satisfies the Community trade mark. OJ 1994 1. 11, p. 1. the conditions set out in Article 5(2) in 4 — Annexed to the Benelux Trade Mark Convention of 19 March 1962; as amended by a protocol of 2 December relation to a sign. Moreover Article 9(1)(a), 1991 which entered into force on 1 January 1996.

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OPINION OF MR JACOBS — CASE C-408/01

11. In September 1997 Adidas sought an 14. In August 1998 the Gerechtshof set interlocutory order from the President of aside the judgment of the Rechtbank and, the Rechtbank te Zwolle (District Court, in a fresh judgment, dismissed Adidas' Zwolle) enjoining Fitnessworld inter alia (i) claims. I - 12542

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5.11 Moreover, the Gerechtshof considers that, as Fitnessworld has for the time being 17. Adidas appealed to the Hoge Raad der demonstrated sufficiently on the basis of... Nederlanden, arguing in particular that the exhibits, the stripe motif of two vertical Trade Marks Directive provides protection, parallel stripes on the side seams, contrast- at least as regards marks with a reputation ing with the background colour, has over and/or great distinctive character, even the years been regularly used in the Nether- where there is no likelihood of confusion,

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OPINION OF MR JACOBS — CASE C-408/01

'1 (a) Must Article 5(2) of the Directive be interpreted as meaning that, under a national law implementing that provision, the proprietor of a trade mark which has a reputation in the Member State concerned 20. Second, it raises the question whether may also oppose the use of the the Gerechtshof applied a correct criterion trade mark or a sign similar to it, in for determining whether the signs at issue the manner and circumstances were similar within the meaning of referred to therein, in relation to Article 5(2) of the Directive. goods or services which are ident- I - 12544

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ical with or similar to those for (b) If the sign alleged to be an infringement which the trade mark is registered? in such a case is viewed purely as an embellishment by the relevant section of the public, what importance must be attached to that circumstance in con- nection with the question concerning the similarity between the trade mark and the sign?'

(b) If the answer to Question 1(a) is in the negative: where Article 5(2) of the Directive is implemented in a national law, must the concept of "likelihood of confusion" referred to in Article 5(1)(b) of the Directive be interpreted as meaning that there exists such a likeli- 23. Written observations have been sub- hood if a person other than the propri- mitted by Adidas, Fitnessworld, the etor of the trade mark uses a trade Netherlands and United Kingdom Govern- mark with a reputation or a sign ments and the Commission, all of whom similar to it, in the manner and circum- except the Netherlands Government were stances referred to in Article 5(2) of the also represented at the hearing. Directive, in relation to goods or ser- vices which are identical or similar to those for which the trade mark is registered?

26. In that case the Court was asked in effect whether Article 5(2) applies, as its wording suggests, only in relation to goods 28. The United Kingdom submits that that or services which are not similar. The interpretation follows from the fact that Court ruled that Article 5(2) entitles the Article 5(2) is optional. The Directive does Member States to provide specific protec- not require Member States to provide any tion for registered trade marks with a extra protection for marks with a repu- reputation in cases where a later mark or tation but rather expressly confers a spe- sign, which is identical or similar to the cific option for the provision of such registered mark, is used for goods or protection where the mark and the sign services identical or similar to those are used in relation to non-similar goods or covered by the registered mark. services. If a Member State may properly decide to reject Article 5(2) altogether, it must be lawful for it to decide to implement only the express aspect of it.

30. First, the Court in Davidoff II explicitly a complete harmonisation of the rules stated that, in the light of the overall relating to the rights conferred by a trade scheme and objectives of the legislation, mark and accordingly define the rights of 'Article 5(2) cannot be given an interpre- proprietors of trade marks in the Commu- tation which would lead to well-known nity. 8 marks having less protection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services'. 6It is clear from the following paragraphs in the judg- ment that the Court considered that an interpretation of Article 5(2) which did not protect against use of a sign in relation to 33. Finally, it seems improbable that the similar goods or services would have that Court in Davidoff II was intending to result. Accordingly it follows from the permit Member States to retain national judgment that Article 5(2) cannot be so implementing legislation which did not interpreted. That factor alone to my mind extend to similar goods or services given militates against the approach advocated that the national legislation at issue (like by the United Kingdom. that at issue in the present case) was, in line with the wording of Article 5(2), expressly limited to non-similar goods or services; 9' the referring court needed to know whether that national legislation none the less con- ferred protection where the allegedly infringing use was in relation to similar 31. Furthermore, the United Kingdom's goods or services. interpretation runs directly counter to the statement in the preamble to the Directive that 'the grounds for refusal or invalidity concerning the trade mark itself... or con- cerning conflicts between the trade mark and earlier rights, are to be listed in an exhaustive manner, even if some of these grounds are listed as an option for the Member States which will therefore be able 34. In my view therefore question 1(a) to maintain or introduce those grounds in referred by the Hoge Raad should be their legislation'. 7 answered in the affirmative, to the effect that Article 5(2) of the Directive is not correctly implemented unless the proprietor of a trade mark with a reputation in the Member State concerned is entitled to oppose the use of the mark or a similar

37. The concept of detriment to the dis- tinctive character of a trade mark reflects what is generally referred to as dilution. That notion was first articulated by Schechter, 10 who advocated protection 35. Since question 1(b) arises only if the against injury to a trade mark owner going answer to question 1(a) is in the negative, it beyond the injury caused by use of an does not require an answer. identical or similar mark in relation to identical or similar goods or services caus- ing confusion as to origin. Schechter described the type of injury with which he was concerned as the 'gradual whittling away or dispersion of the identity and hold upon the public mind' of certain marks. 11 The courts in the United States, where owners of certain marks have been pro- tected against dilution for some time, 12 have added richly to the lexicon of dilution, describing it in terms of lessening, watering The scope of Article 5(2): dilution, degra- down, debilitating, weakening, undermin- dation and free riding ing, blurring, eroding and insidious gnaw- ing away at a trade mark. 13 The essence of dilution in this classic sense is that the blurring of the distinctiveness of the mark means that it is no longer capable of arousing immediate association with the

goods for which it is registered and used. 14 39. The concepts of taking unfair advan- Thus, to quote Schechter again, 1 5'for tage of the distinctive character or repute of instance, if you allow Rolls Royce restaur- the mark in contrast must be intended to ants and Rolls Royce cafeterias, and Rolls encompass 'instances where there is clear Royce pants, and Rolls Royce candy, in 10 exploitation and free-riding on the coattails years you will not have the Rolls Royce of a famous mark or an attempt to trade mark any more'. upon its reputation'. 18 Thus by way of example Rolls Royce would be entitled to prevent a manufacturer of whisky from exploiting the reputation of the Rolls Royce mark in order to promote his brand. 19 It is not obvious that there is any real difference between taking advantage of a mark's distinctive character and taking advantage of its repute; since however nothing turns on any such difference in the present case, I shall refer to both as free-riding.

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Question 2(a) to give rise to a likelihood of confusion for the purpose of that provision, the national court must determine the degree of visual, aural or conceptual similarity between them. Since that ruling, the Court has recognised in Sieckmann 23 that a smell or 41. In question 2(a) the Hoge Raad asks olfactory sign may in principle constitute a whether the notion of similarity between a trade mark (although the requirement that mark and a sign for the purpose of the sign be capable of graphic represen- Article 5(2) is to be assessed on the basis tation was not satisfied by any of the means of a criterion other than that of (direct or proposed in that case); the national court indirect) confusion as to origin; if so, it asks may therefore in future be called on to the Court to indicate the correct criterion. determine in addition the degree of olfac- tory similarity between a mark and a sign. I agree with Fitnessworld, Adidas and the Netherlands and United Kingdom Govern- ments that the national court must carry out the same exercise — namely determine the degree of sensory or conceptual simi- larity — in order to assess the degree of 42. Article 5(2) applies, like Article 5(1)(b), similarity for the purpose of Article 5(2); where the mark and the sign are identical indeed it is difficult to see on what other or similar. Both those provisions impose basis similarity could be assessed. further conditions for their application: in particular Article 5(2) applies where use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark, while Article 5(1)(b) applies where, because of the identity or similarity, there exists a likelihood of confusion on the part 44. It is clearly not necessary however to of the public. show that that similarity gives rise to a likelihood of confusion for the purpose of Article 5(2), as Fitnessworld submits.

indirect confusion where the public made a Court has moreover explicitly stated that connection between the proprietors of the that provision 'establishes, for the benefit sign and those of the mark and confused of well-known trade marks, a form of them. Both direct and indirect confusion in protection whose implementation does not that sense constitute confusion within the require the existence of a likelihood of meaning of Article 5(1)(b). In contrast, confusion'. 26 likelihood of association would arise where the public considered the sign to be similar to the mark and perception of the sign called to mind the memory of the mark, although the two were not confused. The Court ruled that likelihood of association did not constitute confusion within the 48. Although Article 5(2) applies only meaning of Article 5(1)(b). where the mark and the sign are identical or similar, it does not explicitly require that that similarity cause a given state of mind on the part of the public. Instead, the provision focuses on the effect of the use against which it seeks to protect, referring to use which 'without due cause takes unfair advantage of, or is detrimental to, 46. That provision, it will be recalled, the distinctive character or the repute of the entitles trade mark owners to prevent third trade mark'. parties from using '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..., there exists a likelihood of confusion on the part of the public'. It thus requires a direct causal relationship between the similarity (or identity) and the likelihood of confusion. 49. It seems obvious that use of a sign The interdependence of the two concepts is cannot have such an effect unless the sign further stressed in the preamble to the brings the mark in some way to the mind of Directive, which states that 'it is indispens- the relevant public. Thus, considering in able to give an interpretation of the concept the light of the general scheme and purpose of similarity in relation to the likelihood of of the Directive the requirement in confusion'. 25 Article 5(2) that the trade mark have a reputation, the Court has stated that it is only where there is a sufficient degree of knowledge of the mark that the public, when confronted by the sign, may possibly

52. In question 2(b) the Hoge Raad asks whether it is relevant in assessing the similarity between the mark and the sign for the purpose of Article 5(2) that the sign is viewed purely as an embellishment or 50. However, it does not seem either decoration by the relevant section of the necessary or helpful to seek to specify public. further the criteria by which the question concerning the similarity between the mark and the sign should be assessed. National courts will be able to decide, without further analysis of the concept of similarity, whether the similarity is such as to make 5 3 . In order to determine whether possible the use complained of, be it in the Article 5(2) is applicable it must of course form of dilution, degradation or free-rid- be assessed inter alia whether the mark and ing. It is therefore sufficient in my view to the allegedly infringing sign are similar. As note that Article 5(2) requires (i) that the I have indicated in the context of question mark and the sign be similar and (ii) that 2(a), I consider that the similarity between the use complained of take unfair advan- a mark and a sign for the purpose of tage of, or be detrimental to, the distinctive Article 5(2) is to be assessed on the basis of character or the repute of the mark. the degree of sensory or conceptual simi- larity between them. Whether the sign is viewed purely as a decoration does not however seem to me to assist in that assessment. I will accordingly approach question 2(b) on the basis that what is at issue is rather whether it is relevant in 51. I accordingly conclude in answer to assessing the applicability of Article 5(2) as question 2(a) that (i) the notion of simi- a whole that the sign is viewed purely as a larity between a mark and a sign for the decoration by the relevant section of the purpose of Article 5(2) is to be assessed on public. the basis of the degree of sensory or conceptual similarity between them and (ii) the protection conferred by Article 5(2) does not require the existence of a likeli- hood of confusion between the mark and the sign. 54. It has been suggested by some of those submitting observations 28that Article 5(2)

cannot apply where a sign is viewed purely answered on the sole basis that Article 5(2) as a decoration simply because in such cannot apply where a sign is viewed purely circumstances no connection with a similar as a decoration simply because in such mark will be made. However I do not circumstances no connection with a similar consider that those statements are necess- mark may be made. The correct starting arily correct, particularly where the trade point must be the terms, scheme and mark allegedly infringed is based on a objective of Article 5(2) as a whole. shape or pattern in widespread use. It is not inconceivable for example that a person seeing a pattern involving diamond shapes will be reminded of Renault's trade mark consisting of a stylised diamond, or that a pattern of red triangles could call to mind the red triangle which has been an essential component of the trade mark of Bass, the UK brewing company, since the mid-nine- teenth century. 29 The Court moreover has recently ruled that in principle a colour per se may be sufficiently distinctive to be registered as a trade mark; 30 to the extent that colours are so registered, the scope for the public to be reminded of a particular mark by merely decorative use of the same or a similar colour in other contexts is clearly increased. 56. That provision does not explicitly refer to the way in which the offending sign is viewed. It applies where the sign is used in the course of trade in relation to goods or services. The Commission contends that that phrase must mean 'in order to dis- tinguish goods or services' or 'as a mark'. In support of that argument the Commis- sion refers to Article 5(5). That provision states that Article 5(1) to 5(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 55. I do not therefore consider that the distinguishing goods and services, where referring court's question 2(b) can be use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the 29 — The word and device mark incorporating the triangle was registered as a trade mark in the United Kingdom on trade mark'. The Commission submits that 1 January 1876. being the first mark to he registered under it follows that Article 5(2) does not permit the Trade Marks Act 1875 (and hence, since the UK Act was the earliest legislation permitting trade mark regis- a trade mark owner to prevent any use of a tration, the first registered trade mark in the world). The sign but only uses the purpose of which is mark had however been in use for some time before that. It may be seen on two bottles of beer on the counter of the to distinguish the goods or services to bar at the Eolies-Bcrgère painted by Manet in 1882. which it relates from those of other under- 30 — C a s e C-104/01, ECR I-3793, Liberici Groep, judgment delivered on 6 May 2003. takings.

58. That proposition is moreover firmly supported by the case-law of the Court. In particular in Robelco 32 the Court stated that 'reinforced protection of a trade mark's distinctive character or reputation against certain uses of a sign other than for 61. The case-law of the Court confirms the purpose of distinguishing goods or that the perception of the relevant section services is not covered by Community of the public is relevant in assessing harmonisation' and that 'where... the sign whether a sign is used as a trade mark. is not used for the purpose of distinguishing From the earliest trade mark cases before it goods or services, it is necessary to refer to (which, before the Directive, were brought the legal orders of the Member States to under the Treaty provisions on the free determine the extent and nature, if any, of movement of goods), the Court has ruled the protection afforded to owners of trade that the essential function of the trade mark marks who claim to be suffering damage as 'is to guarantee the identity of the origin of a result of use of that sign'. the trade-marked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish 31 — See also the sixth recital in the preamble to the Directive, which states that the Directive 'does not exclude the that product from products which have application to trade marks of provisions of law of the Member States other than trade mark law, such as the another origin'. 33 Clearly that function provisions relating to unfair competition, civil liability or consumer protection'. 32 — Cited in note 8, paragraphs 31 and 34 of the judgment. See also Case C-63/97 BMW and BMW Nederland [1999] 33 —Case 102/77 Hoffmann-La Roche [1978] ECR 1139, ECR I-905, paragraph 38; paragraph 37 of my Opinion in paragraph 7 of the judgment. The dictum has resounded Case C-2/00 Hölterhoff [2002] ECR I-4187; and para- through the case-law to the present day; see most recently graph 38 of the Opinion of Advocate General Ruiz-Jarabo Libertel Groep, cited in note 30, paragraph 62 of the in Case C-206/01 Arsenal Football Club, cited in note 26. judgment, and cases there cited.

'A trade mark must distinguish the goods or services concerned as originating from a particular undertaking. In that connection, 63. Finally I would add that in my view it regard must be had both to the ordinary use would in any event be undesirable as a of trade marks as a badge of origin in the matter of principle to extend the protection sectors concerned and to the perception of of trade marks in such a way as to preclude the relevant public.' the use of common decorations and motifs such as stripes. The Court has ruled that Article 3(1)(c) and Article 3(1)(e) of the Directive pursue aims that are in the public interest, which requires that signs and indications descriptive of the categories of goods or services for which registration is sought, and a shape whose essential char- 62. The effect of the way in which the acteristics perform a technical function and decorative element is perceived in the were chosen to fulfil that function, may be present case is very different from the freely used by all. 37 It has also recognised situation in Arsenal, 35 in which the Court that there is a public interest in not unduly held that it was not relevant that the restricting the availability of colours for the allegedly infringing sign was perceived as other operators who offer for sale goods or a badge of support for or loyalty or services of the same type as those in respect affiliation to the proprietor of the mark. of which registration is sought. 38 Advocate That case concerned a claim for infringe- General Ruiz-Jarabo sounded a similar ment under Article 5(1)(a), which provides note of caution in what may appropriately for absolute protection in the case of be described as the coda to his recent identity between the mark and the sign Opinion in Shield Mark, 39 a case which and between the goods or services con- concerns the question whether sounds or cerned and those for which the mark is noises 40 may be regarded as trade marks. registered. 36 In that context the unauth- orised use by a third party of the identical 37 — Libertel Groep, cited in note 30, paragraphs 52 and 53 of the judgment and the cases there cited. 38 — Libertel Groep, cited in note 30, paragraph 55 of the 34 — Cited in note 30, paragraph 62 of the judgment. See also judgment Joined Cases C-108/97 and C-109/97 Windsurfing Chiem- 39 — Case C-283/01, paragraphs 48 to 52 of the Opinion see [1999] ECR I-2779, paragraphs 49 to 52. delivered on 3 April 2003. 35 — Cited in note 32, paragraph 61 of the judgment. 40 — At issue in the main proceedings were the first nine notes of 36 — See paragraph 50 of the judgment, citing the 10th recital in Beethoven's Für Elise (Bagatelle in A minor, WoO 59) and the preamble to the Directive. the crow of a cock.

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(2) The notion of similarity between a mark and a sign for the purpose of Article 5(2) of Directive 89/104 is to be assessed on the basis of the degree of sensory or conceptual similarity between them.

(3) The protection conferred by Article 5(2) of Directive 89/104 does not require the existence of a likelihood of confusion between the mark and the sign.

(4) It is a condition of the application of Article 5(2) of Directive 89/104 that the allegedly infringing sign is used as a trade mark, that is to say for the purpose of distinguishing goods or services. That will not be case where that sign is viewed purely as a decoration by the relevant section of the public.

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