Keywords
Summary

Keywords

1 Preliminary rulings - Jurisdiction of the national courts - Application of provisions interpreted by the Court

(EC Treaty, Art. 177 (now Art. 234 EC))

2 Approximation of laws - Trade marks - Directive 89/104 - Right for the owner of a registered trade mark to contest its unlawful use - Sign used for identical or similar products - Mere aural similarity between a trade mark and a sign does not preclude the likelihood of confusion - Assessment of the likelihood of confusion - Criteria - Determination whether a trade mark has a distinctive character - Criteria

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

Summary

1 In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on interpretation necessary to resolve the case before it, while it is for the national court to apply the rules of Community law, as interpreted by the Court, to the facts of the case under consideration.

2 It is possible that mere aural similarity between a trade mark and a sign, used for identical or similar products, may create a likelihood of confusion within the meaning of Article 5(1)(b) of First Directive 89/104 on trade marks. The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.

In order to determine the distinctive character of a mark and, accordingly, to assess whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character.