Keywords
Summary

Keywords

1. Approximation of laws — Trade marks — Directive 89/104 — Trade mark with a reputation — Option of providing protection for extending to non-similar goods or services (Article 5(2) of the directive) — Obligation on Member States exercising this option to also provide that protection in case of use of a sign for goods or services which are identical or similar — (Council Directive 89/104, Art. 5(2))

2. Approximation of laws — Trade marks — Directive 89/104 — Trade mark with a reputation — Protection of the trade mark extended to non-similar goods or services (Article 5(2) of the directive) — Degree of similarity between the mark and the later sign — (Council Directive 89/104, Art. 5(2))

3. Approximation of laws — Trade marks — Directive 89/104 — Trade mark with a reputation — Protection of the trade mark extended to non-similar goods or services (Article 5(2) of the directive) — Perception of the later sign by the relevant section of the public as an embellishment — Effect — (Council Directive 89/104, Art. 5(2))

Summary

1. A Member State, where it exercises the option provided by Article 5(2) of First Directive 89/104 relating to trade marks, consisting of providing specific protection for trade marks with a reputation, is bound to grant that protection in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.

see para. 22, operative part 1

2. The specific protection conferred by Article 5(2) of First Directive 89/104 relating to trade marks on trade marks with a reputation is not conditional on a finding of a degree of similarity between the mark with a reputation and the later sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

see para. 31, operative part 2

3. The fact that a sign is viewed as an embellishment by the relevant section of the public is not in itself an obstacle to the specific protection conferred by Article 5(2) of First Directive 89/104 relating to trade marks on trade marks with a reputation, where the degree of similarity between the trade mark with a reputation and the later sign is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it does not necessarily establish any link with a registered mark, with the result that one of the conditions of the protection conferred by Article 5(2) of Directive 89/104 is then not satisfied.

see para. 41, operative part 3