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IMPORTANT LEGAL NOTICE - IMPORTANT LEGAL NOTICE - The source of this judgment is the web site of the Court of Justice of the European Communities. The information in this database has been provided free of charge and is subject to a Court of Justice of the European Communities disclaimer and a copyright notice. This electronic version is not authentic and is subject to amendment.
JUDGMENT OF THE COURT
11 November 1997(1)
(Directive 89/104/EEC - Approximation of laws relating to trade marks -
'Likelihood of confusion which includes the likelihood of association')
In Case C-251/95,
REFERENCE to the Court under Article 177 of the EC Treaty by the
Bundesgerichtshof for a preliminary ruling in the proceedings pending before that
court between
SABEL BV
and
Puma AG, Rudolf Dassler Sport
on the interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC of
21 December 1988 to approximate the laws of the Member States relating to trade
marks (OJ 1989 L 40, p.1),
THE COURT,
composed of: G.C. Rodríguez Iglesias, President, C. Gulmann (Rapporteur),
H. Ragnemalm and M. Wathelet, (Presidents of Chambers), G.F. Mancini,
J.C. Moitinho de Almeida, P.J.G. Kapteyn, J.L. Murray, D.A.O. Edward,
J.-P. Puissochet, G. Hirsch, P. Jann and L. Sevón, Judges,
Advocate General: F.G. Jacobs,
Registrar: H.A. Rühl, Principal Administrator,
after considering the written observations submitted on behalf of:
- Puma AG, Rudolf Dassler Sport, by W. Hufnagel, Patentanwalt,
- the French Government, by C. de Salins, Deputy Director in the Legal
Affairs Department of the Ministry of Foreign Affairs, and P. Martinet,
Secretary for Foreign Affairs in that Ministry, acting as Agents,
- the Netherlands Government, by A. Bos, Legal Adviser in the Ministry of
Foreign Affairs, acting as Agent,
- the United Kingdom Government, by L. Nicoll, of the Treasury Solicitor's
Department, acting as Agent, assisted by M. Silverleaf, Barrister,
- the Commission of the European Communities, by J. Grunwald, Legal
Adviser, and B.J. Drijber, of its Legal Service, acting as Agents,
having regard to the Report for the Hearing,
after hearing the oral observations of SABEL BV, represented by R.E.P. de Ranitz,
of The Hague Bar; of the Belgian Government, represented by A. Braun, of the
Brussels Bar; of the French Government, represented by P. Martinet; of the
Luxembourg Government, represented by N. Decker, of the Luxembourg Bar; of
the United Kingdom Government, represented by L. Nicoll, assisted by
M. Silverleaf; and of the Commission, represented by J. Grunwald, at the hearing
on 28 January 1997,
after hearing the Opinion of the Advocate General at the sitting on 29 April 1997,
gives the following
Judgment
- By order of 29 June 1995, received at the Court on 20 July 1995, the
Bundesgerichtshof (Federal Court of Justice) referred to the Court for a
preliminary ruling under Article 177 of the EC Treaty a question on the
interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC of 21
December 1988 to approximate the laws of the Member States relating to trade
marks (OJ 1989 L 40, p. 1, hereinafter 'the Directive').
- That question was raised in proceedings between the Dutch company SABEL BV
(hereinafter 'SABEL') and the German company Puma AG, Rudolf Dassler Sport
(hereinafter 'Puma') concerning an application to register the IR mark 540 894,
depicted below,
Figure
Image file SABEL.WPG with height " and width "
in Germany, inter alia for goods in classes 18 'Leather and imitation leather,
products made therefrom not included in other classes; bags and handbags' and
25 'Clothing, including tights, hosiery, belts, scarves, ties/cravats and braces;
footwear; hats'.
- Puma lodged opposition to the registration of that mark on the ground, in
particular, that it was the proprietor of the pictorial mark depicted below,
Figure
Image file PUMA_2.WPG with height " and width "
which was of earlier priority and registered in Germany (under No 1 106 066), inter
alia for 'leather and imitation leather, goods made therefrom (bags) and articles
of clothing'.
- The Deutsches Patentamt (German Patent Office) considered there to be no
resemblance for the purposes of trade-mark law between the two marks and
rejected the opposition. Puma therefore appealed to the Bundespatentgericht
(Federal Patents Court) which partially upheld its application and held that there
was a resemblance between the two marks with respect to SABEL's goods in
classes 18 and 25, which it regarded as being identical or similar to the goods on
the list of articles covered by the Puma mark. SABEL then appealed to the
Bundesgerichtshof for annulment of the decision refusing its application.
- The Bundesgerichtshof provisionally considered that, applying the principles applied
hitherto under German law for determining whether there is a likelihood of
confusion for trade-mark purposes, no such likelihood existed as regards the two
marks in question.
- The criteria applied by the Bundesgerichtshof in order to reach that provisional
conclusion are, in essence, as follows:
- In determining whether there is a likelihood of confusion, the court must
focus on the overall impression made by the respective signs. It is not
permissible to isolate one element out of a graphic ensemble and to restrict
examination of the likelihood of confusion to that element alone. However,
an individual component may be recognized as having a particularly
distinctive character which characterizes the sign as a whole, and,
consequently, a likelihood of confusion may be found to exist if another
party's sign resembles the whole of the sign so characterized. Even in such
a case, however, the two signs must be compared in their entirety and the
comparison must not be confined to their individual (characterizing)
elements.
- A sign may have a particularly distinctive character either per se or because
of the reputation the mark enjoys with the public. The more distinctive its
character, the greater the risk of confusion. However, since no submission
had been made on that point in the present case, the starting point for
examining the similarity of the two marks is that the earlier mark has
normal distinguishing characteristics.
- The assessment of whether an element has such significance as to
characterize the sign as a whole is, essentially, a matter for the court called
upon to adjudicate on the substance of the case, subject however to its
observing the rules of logic and common sense. The Bundespatentgericht
cannot be criticized in law for stressing the importance of the pictorial
component of the SABEL mark and considering that the textual component
of the mark was of only secondary importance.
- Strict criteria must be applied with respect to the likelihood of confusion
between pictorial components which are basically descriptive and have little
imaginative content. The depiction of a bounding feline is a pictorial
component which closely follows a natural model and reproduces the
bounding motion typical of such animals. The particular features of the
depiction of the bounding feline in the Puma mark, for example its
depiction as a silhouette, are not reproduced in the SABEL mark. The fact
that there is an analogy between the pictorial components of the two marks
can therefore not be adduced as a ground for finding that there is a
likelihood of confusion.
- None the less, the Bundesgerichtshof seeks to ascertain the importance to be
accorded to the semantic content of the marks (in the present case, a 'bounding
feline') in determining the likelihood of confusion. That difficulty is occasioned,
in particular, by the ambiguous wording of Article 4(1)(b) of the Directive, in terms
of which the likelihood of confusion 'includes the likelihood of association with the
earlier trade mark'. The question therefore arises for the national court whether
the mere association which the public might make between the two marks, through
the idea of a 'bounding feline', justifies refusing protection to the SABEL mark
in Germany for products similar to those on the list of articles covered by Puma's
priority mark.
- The Directive, which was implemented in Germany by the Gesetz über den Schutz
von Marken und sonstigen Kennzeichen (Law on the Protection of Trade Marks
and Other Signs) of 25 October 1994 (BGBl I, p. 3082), contains, in Article 4(1)(b),
the following provision:
'A trade mark shall not be registered or, if registered, shall be liable to be declared
invalid:
(a) ...
(b) if because of its identity with, or similarity to, the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks,
there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.'
- The tenth recital in the preamble to the Directive states:
'Whereas the protection afforded by the registered trade mark, the function of
which is in particular to guarantee the trade mark as an indication of origin, is
absolute in the case of identity between the mark and the sign and goods or
services; whereas the protection applies also in case of similarity between the mark
and the sign and the goods or services; whereas it is indispensable to give an
interpretation of the concept of similarity in relation to the likelihood of confusion;
whereas the likelihood of confusion, the appreciation of which depends on
numerous elements and, in particular, on the recognition of the trade mark on the
market, of the association which can be made with the used or registered sign, of
the degree of similarity between the trade mark and the sign and between the
goods or services identified, constitutes the specific condition for such protection;
whereas the ways in which likelihood of confusion may be established, and in
particular the onus of proof, are a matter for national procedural rules which are
not prejudiced by the directive'.
- The Bundesgerichtshof decided to stay proceedings and to refer the following
question to the Court for a preliminary ruling:
'With reference to the interpretation of Article 4(1)(b) of the First Council
Directive of 21 December 1988 to approximate the laws of the Member States
relating to trade marks, is it sufficient for a finding that there is a likelihood of
confusion between a sign composed of text and picture and a sign consisting merely
of a picture, which is registered for identical and similar goods and is not especially
well known to the public, that the two signs coincide as to their semantic content
(in this case, a bounding feline)?
What is the significance in this connection of the wording of the Directive, in terms
of which the likelihood of confusion includes the likelihood that a mark may be
associated with an earlier mark?'
- In its question the Bundesgerichtshof is essentially asking whether the criterion of
the 'likelihood of confusion ... which includes the likelihood of association with the
earlier trade mark' contained in Article 4(1)(b) of the Directive is to be
interpreted as meaning that the mere association which the public might make
between the two marks as a result of a resemblance in their semantic content, is
a sufficient ground for concluding that there exists a likelihood of confusion within
the meaning of that provision, taking into account that one of those marks is
composed of a combination of a word and a picture, whilst the other, consisting
merely of a picture, is registered for identical and similar goods, and is not
especially well known to the public.
- Article 4(1)(b) of the Directive, which sets out the additional grounds on which
registration may be refused or a registered mark declared invalid in the event of
conflict with earlier marks, provides that a trade mark conflicts with an earlier
trade mark if, because of the identity or similarity of both the trade marks and the
goods or services covered, there exists a likelihood of confusion on the part of the
public, which includes the likelihood of association between the two marks.
- Essentially identical provisions are found in Article 5(1)(a) and (b) of the Directive,
which defines the situations in which the proprietor of a trade mark is entitled to
prevent third parties from using signs identical with or similar to its trade mark, and
in Articles 8(1)(b) and (9)(1)(b) of Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).
- The Belgian, Luxembourg and Netherlands Governments claimed that the term
'likelihood of association' was included in those provisions of the Directive at their
request, in order that they should be construed in the same manner as Article 13a
of the Uniform Benelux Law on Trade Marks which adopts the concept of
resemblance between marks, rather than that of likelihood of confusion, in defining
the scope of the exclusive right conferred by a trade mark.
- Those governments refer to a judgment of the Benelux Court holding that there is
resemblance between a mark and a sign when, taking account of the particular
circumstances of the case, in particular the distinctiveness of the mark, the mark
and the sign, considered separately and together, present, aurally, visually or
conceptually, a similarity such as to establish an association between the sign and
the mark (judgment of 20 May 1983 in Case A 82/5 Jullien v Verschuere, Jur. 1983,
vol. 4, p. 36). That decision is based on the idea that, where a sign is likely to give
rise to association with a mark, the public makes a connection between the sign
and the mark. Such a connection may be prejudicial to the earlier mark not only
if it gives the impression that the products have the same or a related origin, but
also where there is no likelihood of confusion between the sign and the mark.
Since perception of the sign calls to mind, often subconsciously, the memory of the
mark, associations made between a sign and a mark can result in the 'goodwill'
attached to the earlier mark being transferred to the sign and dilute the image
linked to that mark.
- According to those governments, the likelihood of association may arise in three
sets of circumstances: (1) where the public confuses the sign and the mark in
question (likelihood of direct confusion); (2) where the public makes a connection
between the proprietors of the sign and those of the mark and confuses them
(likelihood of indirect confusion or association); (3) where the public considers the
sign to be similar to the mark and perception of the sign calls to mind the memory
of the mark, although the two are not confused (likelihood of association in the
strict sense).
- It must therefore be determined whether, as those governments claim, Article
4(1)(b) can apply where there is no likelihood of direct or indirect confusion, but
only a likelihood of association in the strict sense. Such an interpretation of the
Directive is contested by both the United Kingdom Government and by the
Commission.
- In that connection, it is to be remembered that Article 4(1)(b) of the Directive is
designed to apply only if, by reason of the identity or similarity both of the marks
and of the goods or services which they designate, 'there exists a likelihood of
confusion on the part of the public, which includes the likelihood of association
with the earlier trade mark'. It follows from that wording that the concept of
likelihood of association is not an alternative to that of likelihood of confusion, but
serves to define its scope. The terms of the provision itself exclude its application
where there is no likelihood of confusion on the part of the public.
- The tenth recital in the preamble to the Directive, according to which 'the
likelihood of confusion ... constitutes the specific condition for such protection',
also confirms that interpretation.
- Furthermore, the interpretation given in paragraph 18 of this judgment is not
inconsistent with Article 4(3) and (4)(a) and Article 5(2) of the Directive, which
permit the proprietor of a trade mark which has a reputation to prohibit the use
without due cause of signs identical with or similar to his mark and do not require
proof of likelihood of confusion, even where there is no similarity between the
goods in question.
- In that respect, it is sufficient to note that, unlike Article 4(1)(b), those provisions
apply exclusively to marks which have a reputation and on condition that use of the
third party's mark without due cause takes unfair advantage of, or is detrimental
to, the distinctive character or the repute of the trade mark.
- As pointed out in paragraph 18 of this judgment, Article 4(1)(b) of the Directive
does not apply where there is no likelihood of confusion on the part of the public.
In that respect, it is clear from the tenth recital in the preamble to the Directive
that the appreciation of the likelihood of confusion 'depends on numerous
elements and, in particular, on the recognition of the trade mark on the market,
of the association which can be made with the used or registered sign, of the
degree of similarity between the trade mark and the sign and between the goods
or services identified'. The likelihood of confusion must therefore be appreciated
globally, taking into account all factors relevant to the circumstances of the case.
- That global appreciation of the visual, aural or conceptual similarity of the marks
in question, must be based on the overall impression given by the marks, bearing
in mind, in particular, their distinctive and dominant components. The wording of
Article 4(1)(b) of the Directive - '... there exists a likelihood of confusion on the
part of the public ...' - shows that the perception of marks in the mind of the
average consumer of the type of goods or services in question plays a decisive role
in the global appreciation of the likelihood of confusion. The average consumer
normally perceives a mark as a whole and does not proceed to analyse its various
details.
- In that perspective, the more distinctive the earlier mark, the greater will be the
likelihood of confusion. It is therefore not impossible that the conceptual similarity
resulting from the fact that two marks use images with analogous semantic content
may give rise to a likelihood of confusion where the earlier mark has a particularly
distinctive character, either per se or because of the reputation it enjoys with the
public.
- However, in circumstances such as those in point in the main proceedings, where
the earlier mark is not especially well known to the public and consists of an image
with little imaginative content, the mere fact that the two marks are conceptually
similar is not sufficient to give rise to a likelihood of confusion.
- The answer to the national court's question must therefore be that the criterion of
'likelihood of confusion which includes the likelihood of association with the earlier
mark' contained in Article 4(1)(b) of the Directive is to be interpreted as meaning
that the mere association which the public might make between two trade marks
as a result of their analogous semantic content is not in itself a sufficient ground
for concluding that there is a likelihood of confusion within the meaning of that
provision.
Costs
- The costs incurred by the Belgian, French, Luxembourg, Netherlands and United
Kingdom Governments and by the Commission of the European Communities,
which have submitted observations to the Court, are not recoverable. Since these
proceedings are, for the parties to the main proceedings, a step in the proceedings
pending before the national court, the decision on costs is a matter for that court.
On those grounds,THE COURT,
in answer to the question referred to it by the Bundesgerichtshof by order of 29
June 1995, hereby rules:
The criterion of 'likelihood of confusion which includes the likelihood of
association with the earlier mark' contained in Article 4(1)(b) of First Council
Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member
States relating to trade marks is to be interpreted as meaning that the mere
association which the public might make between two trade marks as a result of
their analogous semantic content is not in itself a sufficient ground for concluding
that there is a likelihood of confusion within the meaning of that provision.
|
Rodríguez Iglesias Gulmann Ragnemalm
Wathelet Mancini Moitinho de Almeida
Kapteyn Murray Edward
Puissochet Hirsch Jann
Sevón
|
Delivered in open court in Luxembourg on 11 November 1997.
R. Grass
G.C. Rodríguez Iglesias
Registrar
President
1: Language of the case: German.
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