Keywords
Summary

Keywords

Approximation of laws — Trade marks — Directive 89/104 — Right for the owner of a registered trade mark to contest its unlawful use — Sign identical with the trade mark — Sign reproducing, without any modification or addition, all the elements constituting the trade mark or, viewed as a whole, containing differences so insignificant that they may go unnoticed by an average consumer — Interpretation applicable both to Article 5(1)(a) and to Article 4(1)(a) of the directive — (Council Directive 89/104, Arts 4(1)(a), and 5(1)(a) and (b))

Summary

Article 5(1)(a) of First Directive 89/104 relating to trade marks, which determines the circumstances in which the proprietor of a trade mark is entitled to prevent third parties from using signs which are identical with his trade mark, must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer who is deemed to be reasonably well informed, reasonably observant and circumspect.

Contrary to Article 5(1)(b) of that directive, which is designed to apply only if, because of the identity or similarity between the signs and marks and between the goods or services which they designate, there exists a likelihood of confusion on the part of the public, Article 5(1)(a) does not require evidence of such a likelihood in order to afford absolute protection in the case of identity of the sign and the trade mark and of the goods or services. Accordingly, the criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition of identity implies that the two elements compared should be the same in all respects. Indeed, the absolute protection in the case of a 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, which is guaranteed by Article 5(1)(a), cannot be extended beyond the situations for which it was envisaged, in particular, to situations which are more specifically protected by Article 5(1)(b).

Moreover, since the conditions of application of Article 5(1)(a) correspond essentially to those of Article 4(1)(a) of the directive, the interpretation thus adopted of Article 5(1)(a) is transposable, mutatis mutandis , to Article 4(1)(a) which provides that a registered trade mark is to be liable to be declared invalid if it is identical with an earlier trade mark, and the goods or services for which the trade mark is registered are identical with the goods or services for which the earlier trade mark is protected.

see paras 40-41, 43, 48-54, operative part