CELEX: 62000CJ0291
Trade marks
Approximation of laws
Directive 89/104/EEC
Article 5(1)(a)
Notion of sign which is identical with the trade mark
Use of the distinctive element of the mark to the exclusion of other elements
Use of all the elements making up the trade mark but with the addition of other elements

By judgment of 23 June 2000, received at the Court on 26 July 2000, the Tribunal de grande instance de Paris (Regional Court,
Paris) referred to the Court for a preliminary ruling under Article 234 EC a question on the interpretation of Article 5(1)(a)
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 LTJ Diffusion SA (hereinafter
LTJ Diffusion) and Sadas Vertbaudet SA (hereinafter
Sadas) concerning a complaint of infringement by the latter of a trade mark registered by the former in relation to articles of
clothing.
Legal background
Community legislation
The directive states, in the first recital in the preamble thereto, that the national trade mark laws contain disparities
which may impede the free movement of goods and freedom to provide services and may distort competition within the common
market.  According to that recital, it is therefore necessary, in view of the establishment and functioning of the internal
market, to approximate the laws of Member States.  The third recital in the preamble to the directive states that
it does not appear to be necessary at present to undertake full-scale approximation of the trade mark laws of the Member States.
As set out in the 10th recital in the preamble to the directive: ... 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; ... the
protection applies also in case of similarity between the mark and the sign and the goods or services; ... it is indispensable
to give an interpretation of the concept of similarity in relation to the likelihood of confusion; ... 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; ....
Article 4(1) of the directive, which lists the further grounds for refusal or invalidity concerning conflicts with earlier
rights, states: A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a)
if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered
are identical with the goods or services for which the earlier trade mark is protected;
(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.
Article 5(1) of the directive, which concerns the rights conferred by a trade mark, provides: The registered trade mark shall confer on the proprietor exclusive rights therein.  The proprietor shall be entitled to prevent
all third parties not having his consent from using in the course of trade:
(a)
any sign which is identical with the trade mark in relation to goods or services which are identical with those for which
the trade mark is registered;
(b)
any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods
or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association between the sign and the trade mark.
National legislation
In France, the law on trade marks is governed by the provisions of the Law of 4 January 1991, codified since 1992, and, more
specifically, by Book VII of the French Code de la propriété intellectuelle (Intellectual Property Code) (JORF of 3 July 1992,
p. 8801; hereinafter
the code).
Article L. 713-2 of the code prohibits: [t]he reproduction, use or affixing of a mark, even with the addition of words such as:
formula, style, system, imitation, type or method, or the use of a mark which has been reproduced, in respect of goods or services identical with those for which the mark
is registered.
Article L. 713-3 of the code provides: Save where the owner has consented, the following shall be prohibited if there is a risk that they might lead to confusion
in the mind of the public:
(a)
the reproduction, use or affixing of a mark, or the use of a mark which has been reproduced, in respect of goods or services
similar to those for which the mark is registered;
(b)
the imitation of a mark or the use of an imitated mark, in respect of goods or services identical with, or similar to, those
for which the mark is registered.
The main proceedings and the question referred for a preliminary ruling
LTJ Diffusion's business is the design, manufacture, marketing and distribution of clothing and footwear, in particular adults'
and children's nightwear, underwear, shoes and slippers.
That company is the proprietor of a trade mark registered at the French Institut national de la propriété industrielle (National
Institute for Industrial Property, hereinafter
the INPI) under No 17731, which was filed on 16 June 1983 and renewed on 14 June 1993 (hereinafter
LTJ Diffusion's trade mark).  The registration relates to goods in Class 25 within the meaning of the Nice Agreement concerning the International Classification
of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised and amended (hereinafter
the Nice Agreement), namely textile articles, both ready-to-wear and made-to-measure, including boots, shoes and slippers.  That trade mark
consists of a single word, filed in the form of a handwritten signature with the characters joined up and a dot between the
two sloping sides of the letter A.  It appears as follows:
Sadas is a company operating a mail-order business, which distributes a catalogue entitled
Vertbaudet.  It markets
inter alia
children's clothing and accessories.
Sadas is the proprietor of a trade mark registered at the INPI under No 93.487.413, which was filed on 29 September 1993 (hereinafter
Sadas' trade mark).  The registration, published on 25 March 1994, relates
inter alia
to goods in Class 25 of the Nice Agreement.
That trade mark, which was filed in the form of upright printed capital letters, is the following: ARTHUR ET FÉLICIE
As may be seen from the file, Sadas' mark is used in the form below:
Being of the opinion that the reproduction and use of Sadas' trade mark for children's clothing and accessories constitute
an infringement of its trade mark, LTJ Diffusion has brought an action against Sadas before the Tribunal de grande instance
de Paris.  It requests that court to issue an injunction, order confiscation and customary publication and declare that Sadas'
trade mark is invalid.
LTJ Diffusion relies primarily on Articles L. 713-2 and L. 713-3 of the code.  It maintains that French case-law and legal
writings interpret, in particular, the prohibition in Article L. 713-2 of the code as referring to cases in which a distinctive
element of a compound mark is reproduced, namely
contrefaçon partielle
(partial infringement), or in which either such an element or the whole mark is reproduced together with elements deemed
not to affect the identity of the mark, a circumstance characterised as
adjonction inopérante
(ineffective addition).
It also claims that, if the filing and use of Sadas' trade mark did not constitute infringements by reproduction of its trade
mark for the purposes of Article L. 713-2 of the code, they do on any view constitute infringement by imitation for the purposes
of Article L. 713-3 of the code.  There is a likelihood of confusion between the two trade marks since the word
Arthur retains its particular distinctiveness within the compound which is Sadas' trade mark.
LTJ Diffusion further maintains that its trade mark is well known by reason of the intensity of its use and of the investment
made in advertising to promote it.
Sadas contends that the various constituent parts of a distinctive sign should not be considered in isolation in order to
determine whether there is an infringement for the purposes of Article L. 713-2 of the code.  According to Sadas, reproduction
of one of the elements of a compound trade mark or the addition of elements to those which make up a trade mark fall outside
the scope of Article 5(1)(a) of the directive since the latter covers only the use of an identical sign without any modification.
The Tribunal de grande instance de Paris considers that the outcome of the main proceedings turns on the interpretation of
the notion of reproduction of a trade mark for the purposes of Article L. 713-2 of the code and specifically on whether, by
reference to the concepts of partial infringement and ineffective addition, that notion extends beyond mere identical reproduction
of a sign registered as a trade mark.
Taking the view that the interpretation of the notion of reproduction of a trade mark for the purposes of Article L. 713-2
of the code must accord with that of the notion of
sign which is identical with the trade mark in Article 5(1)(a) of the directive, the Tribunal de grande instance de Paris has decided to stay proceedings and to refer
the following question to the Court for a preliminary ruling: Does the prohibition in Article 5(1)(a) of [First Council] Directive 89/104[/EEC] of 21 December 1988 to approximate the laws
of the Member States [relating to trade marks] cover only identical reproduction, without addition or omission, of the sign
or signs constituting a mark or can it extend to:
(1)
reproduction of the distinctive element of a mark composed of a number of signs;
(2)
full reproduction of the signs making up the mark where new signs are added?
The question referred for a preliminary ruling
By its question referred for a preliminary ruling, the national court seeks to ascertain how the notion of
sign which is identical with the trade mark within the meaning of Article 5(1)(a) of the directive is to be interpreted.
It is common ground that, in the case in the main proceedings, Sadas' trade mark was indeed used in the course of trade in
relation to goods which are identical with those for which LTJ Diffusion's trade mark was registered.
Observations submitted to the Court
LTJ Diffusion submits that the interpretation of Article 5(1)(a) of the directive must ensure that there is an effective relationship
between that provision and Article 5(1)(b) of the directive.  Where the goods concerned are identical, as in the case in the
main proceedings, a distinction must be made between, on the one hand, partial infringement and infringement with ineffective
addition, which fall under Article 5(1)(a) of the directive, and, on the other, infringement by simple imitation, as referred
to in Article 5(1)(b) of the directive.
According to LTJ Diffusion, counterfeiters seeking to exploit a trade mark enjoying a certain reputation frequently reproduce
that mark while adding to it a sign which does not affect its identity.
That company submits that, in order to determine whether a sign is identical with the trade mark within the meaning of Article
5(1)(a) of the directive, it must be ascertained whether that sign forms a conceptual whole in which the mark loses its individuality,
and therefore any distinctiveness, and blends in with that whole.  In that regard, account needs to be taken of the use and
position of the mark on the market concerned and of how well-known it is, without seeking to ascertain whether there is a
likelihood of confusion.
Sadas, the United Kingdom Government and the Commission submit that a strict meaning should be assigned to the phrase
sign which is identical with the trade mark in Article 5(1)(a) of the directive.
Sadas maintains that a sign which is identical with the trade mark, within the meaning of Article 5(1)(a) of the directive,
must comprise the same elements as the mark in the same arrangement and order, that is to say, be a counterfeit in the strict
sense and a slavish reproduction of the trade mark.
Sadas further submits that to accept the concept of
partial infringement or
infringement by ineffective addition would not be in accordance with Community law, which prohibits dividing up a trade mark in order to determine whether there
is a likelihood of confusion within the meaning of Article 5(1)(b) of the directive and requires that the mark be assessed
as a whole.  Where a trade mark is not reproduced in an identical manner, as referred to in Article 5(1)(a) of the directive,
but is the object of partial reproduction or addition, Article 5(1)(b) of the directive, which allows the proprietor of the
trade mark to prevent its use only if there exists a likelihood of confusion on the part of the public, should be applied.
The United Kingdom Government and the Commission observe that Article 5(1)(a) of the directive grants absolute protection
to a trade mark
vis-à-vis
an identical sign.  They refer to the 10th recital in the preamble to the directive, which provides that the likelihood of
confusion constitutes the specific condition for the protection afforded by the registered trade mark.  That absolute protection
is not made conditional upon evidence of a likelihood of confusion, so that a comparatively strict meaning must be assigned
to the term
identical employed in Article 5(1)(a) of the directive.
Referring to Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, as set out in Annex 1 C
to the Agreement establishing the World Trade Organisation, approved on behalf of the Community, as regards matters within
its competence, by Council Decision 94/800/EC of 22 December 1994 (OJ 1994 L 336, p. 1) (
TRIPs), the Commission draws attention to the fact that likelihood of confusion may be presumed only in the case of identity between
the trade mark and the sign and between the goods covered, as laid down by Article 5(1)(a) of the directive.  In using the
phrase
sign which is identical with the trade mark, the Community legislature intended to limit the application of that presumption to cases where the sign and the trade mark
are exactly alike.
According to the Commission, if a sign were too readily regarded as identical with a registered trade mark, the scope for
preventing the use of a sign would be widened, without evidence of a likelihood of confusion, beyond the circumstances in
which such a likelihood may be presumed to exist.
The United Kingdom Government submits that the analysis in terms of the global appreciation of the similarity between a sign
and a mark as registered is equally applicable to assessing the identity of a sign with a mark for the purposes of Article
5(1)(a) of the directive.
That government argues that the national court must look at the sign used by Sadas, adopting the perspective of the average
consumer, and must consider that sign as a whole.  It is only if the whole sign is identical to a mark that Article 5(1)(a)
of the directive must be applied. According to that government, if the sign used differs from the mark as registered inasmuch
as the sign contains additional distinctive elements, the sign and the mark should not generally be regarded as identical.
At the hearing, the French Government argued that it is difficult to avoid a strict interpretation of the concept of identity
used in Article 5(1)(a) of the directive.  Only such an interpretation enables practical effect to be given to the system
of protection provided for by the directive in the case of mere similarity within the meaning of Article 5(1)(b) of the directive.
According to that government, since the question referred for a preliminary ruling was submitted, French case-law has developed
in so far as disputes concerning the partial reproduction of trade marks, or their reproduction in full with the addition
of elements, are now examined solely on the basis of infringement by way of imitation, pursuant to Article 5(1)(b) of the
directive, and not infringement
stricto sensu
, pursuant to Article 5(1)(a) of the directive.  The prohibition provided for by the latter provision concerns, as a rule,
only identical reproduction and cannot refer to either reproduction of the distinctive element of a mark composed of a number
of signs or full reproduction of the signs making up a mark where new signs are added.
Reply of the Court
As a preliminary point, it must be recalled that, in order to provide a satisfactory answer to the national court which has
referred a question to it, the Court of Justice may deem it necessary to consider provisions of Community law to which the
national court has not referred in its question (see Case 35/85
Tissier
[1986] ECR 1207, paragraph 9, and Case C-107/98
Teckal
[1999] ECR I-8121, paragraph 39).
As may be seen from paragraphs 11, 13 and 16 of this judgment, LTJ Diffusion's trade mark was registered prior to that of
Sadas, and LTJ Diffusion requests the national court not only to grant an injunction and to order confiscation and customary
publication, but also to declare Sadas' trade mark invalid.
It is Article 4 of the directive which sets out the further grounds justifying refusal or invalidity in the event of conflict
concerning earlier rights.  Article 4(1)(a) thus provides that a registered trade mark is to be liable to be declared invalid
if it is identical with an earlier trade mark, and the goods or services for which the trade mark is registered are identical
with the goods or services for which the earlier trade mark is protected.
The conditions of application of Article 4(1)(a) of the directive correspond essentially to those of Article 5(1)(a) of the
directive, which determines the circumstances in which the proprietor of a trade mark is entitled to prevent third parties
from using signs which are identical with his trade mark.  There is a similar correspondence between Articles 8(1)(a) and
9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).
Since both Article 4(1)(a) and Article 5(1)(a) of the directive are relevant to the outcome of the main proceedings, the national
court must be given an interpretation covering those two provisions.
Accordingly, the question submitted will be examined below in the light solely of Article 5(1)(a) of the directive, but the
interpretation adopted following that examination will also apply to Article 4(1)(a) of the directive since that interpretation
will be transposable,
mutatis mutandis
, to the latter provision.
On the substance of the case, it is settled case-law that the essential function of a trade mark is to guarantee the identity
of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion,
to distinguish the goods or services from others which have another origin (see Case 3/78
Centrafarm
[1978] ECR 1823, paragraphs 11 and 12; Case C-379/97
Upjohn
[1999] ECR I-6927, paragraph 21, and Case C-206/01
Arsenal Football Club
[2002] ECR I-10273, paragraph 48).
The Community legislature confirmed that essential function of trade marks by providing, in Article 2 of the Directive, that
signs which are capable of being represented graphically may constitute a trade mark only if they are capable of distinguishing
the goods or services of one undertaking from those of other undertakings (see, in particular, Case C-517/99
Merz & Krell
[2001] ECR I-6959, paragraph 23, and
Arsenal Football Club
, cited above, paragraph 49).
For that guarantee of origin to be ensured, the proprietor must be protected against competitors wishing to take unfair advantage
of the status and reputation of the trade mark by selling products illegally bearing it (see  Case C-349/95
Loendersloot
[1997] ECR I-6227, paragraph 22, and
Arsenal Football Club
, paragraph 50).
Protection for the proprietor of a trade mark is guaranteed by Article 5 of the directive, which determines the rights conferred
by a registered trade mark and provides, in paragraph (1), that that mark is to confer on the proprietor exclusive rights
therein and that the proprietor is to be entitled, within certain limits, to prevent all third parties from using his trade
mark in the course of trade (see, to that effect, Case C-337/95
Parfums Christian Dior
[1997] ECR I-6013, paragraph 34).
As regards Article 5(1)(b) of the directive, the Court has already held that that provision is designed to apply only if,
because of the identity or similarity between the signs and marks and between the goods or services which they designate,
there exists a likelihood of confusion on the part of the public (see, to that effect, Case C-425/98
Marca Mode
[2000] ECR I-4861, paragraph 34).
On the other hand, Article 5(1)(a) of the directive does not require evidence of such a likelihood in order to afford absolute
protection in the case of identity of the sign and the trade mark and of the goods or services.
The criterion of identity of the sign and the trade mark must be interpreted strictly.  The very definition of identity implies
that the two elements compared should be the same in all respects.  Indeed, the absolute protection in the case of a sign
which is identical with the trade mark in relation to goods or services which are identical with those for which the trade
mark is registered, which is guaranteed by Article 5(1)(a) of the directive, cannot be extended beyond the situations for
which it was envisaged, in particular, to those situations which are more specifically protected by Article 5(1)(b) of the
directive.
There is therefore identity between the sign and the trade mark where the former reproduces, without any modification or addition,
all the elements constituting the latter.
However, the perception of identity between the sign and the trade mark must be assessed globally with respect to an average
consumer who is deemed to be reasonably well informed, reasonably observant and circumspect.  The sign produces an overall
impression on such a consumer.  That consumer only rarely has the chance to make a direct comparison between signs and trade
marks and must place his trust in the imperfect picture of them that he has kept in his mind.  Moreover, his level of attention
is likely to vary according to the category of goods or services in question (see, to that effect, Case C-342/97
Lloyd Schuhfabrik Meyer
[1999] ECR I-3819, paragraph 26).
Since the perception of identity between the sign and the trade mark is not the result of a direct comparison of all the characteristics
of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by an average consumer.
In those circumstances, the answer to the question referred must be that Article 5(1)(a) of the directive must be interpreted
as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the
elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go
unnoticed by an average consumer.
Costs
The costs incurred by the French and United Kingdom Governments and by the Commission, 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 action
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 Tribunal de grande instance de Paris by judgment of 23 June 2000, hereby rules:
Rodríguez Iglesias
Wathelet
Schintgen
Gulmann
Jann
Macken
Colneric
von Bahr
Cunha Rodrigues
Delivered in open court in Luxembourg on 20 March 2003.
R. Grass
G.C. Rodríguez Iglesias
Registrar
President
–
Language of the case: French.