Court of Justice of the European Communities (including Court of First Instance Decisions)

Legal framework

'... [I]t is fundamental, in order to facilitate the free circulation of goods and services, to ensure that henceforth 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;

... [T]he protection afforded by the registered trade mark, the function of which is in particular to guarantee 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; ... the protection applies also in case of similarity between the mark and the sign and the goods or services; ... it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; ... the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection; ... the ways in which likelihood of confusion may be established, and in particular the onus of proof, are a matter for national procedural rules which are not prejudiced by the Directive.'

'1. 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;

(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

...

4. Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(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 the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;

...'

'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:

(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;

(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 likelihood of association between the sign and the trade mark.

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 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 trade mark.'

The main proceedings and the questions referred for a preliminary ruling

- in the main proceedings, Davidoff seeks protection of a mark with a reputation against use of another mark, partly for identical goods and partly for similar goods;

- Davidoff's action was dismissed both at first instance and on appeal on the ground that there is no likelihood of confusion;

- the two marks at issue in the main proceedings are similar;

- nevertheless, further findings of fact are required before it is possible to determine whether there is a likelihood of confusion or not;

- accordingly, it is necessary to examine whether protection is conferred on marks with a reputation by Articles 4(4)(a) and 5(2) of the Directive, even in the case of use of a sign for goods which are identical or similar;

- on their wording, those two provisions of the Directive apply only where there is no similarity between the goods concerned;

- however, a broad interpretation of those provisions, by which they would also apply in the case of use of a sign for identical or similar goods, could be based on the consideration that protection of trade marks with a reputation seems even more justified in the case of use of a sign for such goods than in a case of use for non-similar goods;

- if the provisions referred to were none the less to be interpreted literally, the question arises of whether they exhaustively regulate the scope of protection which may be conferred on marks with a reputation under national law or whether they permit supplementary national provisions designed particularly to protect marks with a reputation against unfair competition in the case of later signs used for identical or similar goods.

'(1) Are the provisions of Article 4(4)(a) and Article 5(2) of First Council Directive 89/104/EEC ... to be interpreted (and where appropriate applied) as also entitling the Member States to provide 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 similar to those in respect of which the earlier mark is registered?

(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 detrimental to, the distinctive character or repute of the earlier mark) exhaustive in regulating when it is permissible for provisions protecting marks with a reputation to be retained under national law, or may those articles be supplemented by national rules protecting marks with a reputation against later signs which are used or to be used in respect of identical or similar goods or services?'

The first question

Observations submitted to the Court

The second question

Costs