# C_2014093EN.01000401.xml

| 29.3.2014 | EN | Official Journal of the European Union | C 93/4 |
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29.3.2014

EN

Official Journal of the European Union

C 93/4

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Judgment of the Court (First Chamber) of 6 February 2014 (request for a preliminary ruling from the Hoge Raad der Nederlanden — Netherlands) — Leidseplein Beheer BV, H.J.M. de Vries v Red Bull GmbH, Red Bull Nederland BV

(Case C-65/12) (1)

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(Request for a preliminary ruling - Trade marks - Directive 89/104/EEC - Rights conferred by a trade mark - Trade mark with a reputation - Protection extended to non-similar goods or services - Use by a third party, without due cause, of a sign identical with or similar to the trade mark with a reputation - Definition of ‘due cause’)

2014/C 93/05

Language of the case: Dutch

Referring court

Referring court

Hoge Raad der Nederlanden

Parties to the main proceedings

Parties to the main proceedings

Applicants: Leidseplein Beheer BV, H.J.M. de Vries

Applicants:

Defendants: Red Bull GmbH, Red Bull Nederland BV

Defendants:

Re:

Re:

Request for a preliminary ruling — Hoge Raad der Nederlanden — Interpretation of Article 5(2) 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) — Rights conferred by the mark — Trade mark with a reputation — Protection extended to non-similar goods or services — Use by a third party, without due cause, of a sign identical with, or similar to, the trade mark with a reputation which enables that third party to take unfair advantage of, or which causes detriment to, the distinctive character or the repute of the trade mark — Concept of due cause.

Operative part of the judgment

Operative part of the judgment

Article 5(2) 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 the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:

| — | how that sign has been accepted by, and what its reputation is with, the relevant public; |
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how that sign has been accepted by, and what its reputation is with, the relevant public;

| — | the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and |
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the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and

| — | the economic and commercial significance of the use for that product of the sign which is similar to that mark. |
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the economic and commercial significance of the use for that product of the sign which is similar to that mark.

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(1)  OJ C 126, 28.4.2012.

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