Keywords
Summary

Keywords

1 Approximation of laws - Trade marks - Directive 89/104 - Registration of a new trade mark - Existence of identical or similar goods or services covered by a similar trade mark - Likelihood of confusion with the earlier mark - Assessment of the similarity of goods or services - Distinctive character or reputation of the trade mark - Effect

(Council Directive 89/104, Art. 4(1)(b))

2 Approximation of laws - Trade marks - Directive 89/104 - Registration of a new trade mark - Existence of identical or similar goods or services covered by a similar trade mark - Likelihood of confusion with the earlier mark - Similarity of goods or services - Assessment - Criteria

(Council Directive 89/104, Art. 4(1)(a) and (b))

3 Approximation of laws - Trade marks - Directive 89/104 - Registration of a new trade mark - Existence of identical or similar goods or services covered by a similar mark - Likelihood of confusion with the earlier trade mark - Whether public misled as to the origin of the goods or services - Assessment - Criteria

(Council Directive 89/104, Arts 2 and 4(1)(b))

Summary

1 On a proper construction of Article 4(1)(b) of First Council Directive 89/104 to approximate the laws of the Member States relating to trade marks, the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global assessment implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods and services covered by those marks. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa. However, since the more distinctive the earlier mark, the greater the risk of confusion, trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with less distinctive character.

Accordingly, for the purposes of Article 4(1)(b), registration of a trade mark may have to be refused, despite a lesser degree of similarity between the goods or services covered, where the marks are very similar and the earlier mark, in particular its reputation, is highly distinctive. Even if such an interpretation may make the registration procedure much lengthier, it is, in any event, for reasons of legal certainty and proper administration, necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered.

2 For the purposes of applying Article 4(1)(b) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks, even where one trade mark is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered. In contrast to Article 4(4)(a), which expressly refers to the situation in which the goods or services are not similar, Article 4(1)(b) provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar. In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary.

3 There is a likelihood of confusion within the meaning of Article 4(1)(b) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks where the public can be mistaken as to the origin of the goods or services in question. Article 2 of the directive provides that a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings, while the tenth recital in the preamble to the directive states that the function of the protection conferred by the mark is primarily to guarantee the indication of origin. The essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. Furthermore, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality.

Accordingly, there may be a likelihood of confusion within the meaning of Article 4(1)(b) even where the public perception is that the goods or services have different places of production. By contrast, there can be no such likelihood where it does not appear that the public could believe that the goods or services come from the same undertaking or, as the case may be, from economically-linked undertakings.