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 - Particularly distinctive character per se or because of the reputation the mark enjoys - Sign used for identical or similar products - Likelihood of association, in the strict sense, between the sign and the mark - Likelihood not giving grounds for presuming a likelihood of confusion - Necessity of evidence of the existence of a likelihood of confusion

(Directive 89/104, Art. 5(1)(b))

Summary

$$Article 5(1)(b) of First Directive 89/104 on trade marks cannot be interpreted as meaning that where

- a trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public, and

- a third party, without the consent of the proprietor of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give rise to the possibility of its being associated with that mark,

the exclusive right enjoyed by the proprietor entitles him to prevent the use of the sign by that third party if the distinctive character of the mark is such that the possibility of such association giving rise to confusion cannot be ruled out.

The reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion simply because of the existence of a likelihood of association in the strict sense. A positive finding of the existence of a likelihood of confusion, which constitutes the matter to be proved, is necessary.

( see paras 39, 41-42 and operative part )