# C_2006143EN.01001902.xml

| 17.6.2006 | EN | Official Journal of the European Union | C 143/19 |
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17.6.2006

EN

Official Journal of the European Union

C 143/19

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Judgment of the Court (Third Chamber) of 27 April 2006 (reference for a preliminary ruling from the Cour de cassation (Belgium)) — Levi Strauss & Co. v Casucci SpA

(Case C-145/05) (1)

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(Trade marks - Directive 89/104/EEC - Article 5(1)(b) - Relevant time for assessing likelihood of confusion between a trade mark and a similar sign - Loss of distinctive character owing to conduct of the proprietor of the trade mark after use of the sign has commenced)

(2006/C 143/34)

Language of the case: French

Referring court

Cour de cassation (Belgium)

Parties to the main proceedings

Applicant: Levi Strauss & Co.

Applicant:

Defendant: Casucci SpA

Defendant:

Re:

Reference for a preliminary ruling — Cour de cassation (Belgium) — Interpretation of Article 5(1) of Directive 89/104/EEC: First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Relevant time for appreciation of the likelihood of confusion between a trade mark and a similar sign — Loss of distinctiveness as a result of the trade mark owner's conduct after use of the sign began

Operative part of the judgment

| 1. | Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used. |
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1.

Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.

| 2. | Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor's rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease use of that sign. |
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2.

Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor's rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease use of that sign.

| 3. | It is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked. |
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3.

It is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked.

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(1)  OJ C 132, 28.5.2005.

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