Opinion of the Advocate General — ECLI:EU:C:1998:159
Date: 1998-04-02
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary of the Judgment 
1. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade 
mark — Existence of identical or similar goods or services covered by a similar trade mark — 
Likelihood of confusion with the earlier trade mark — Assessment of the similarity of goods 
or services — Distinctive character or reputation of the trade mark — Effect 
(Council Directive 89/104, Art. 4(1)(b)) 
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SUMMARY — CASE C-39/97 
2. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade 
mark — Existence of identical or similar goods or services covered by a similar trade mark — 
Likelihood of confusion with the earlier trade mark — Similarity of goods or services -— Assess­
ment — Criteria 
(Council Directive 89/104, Art. 4(1)(a) and (b)) 
3. Approximation of laws — Trade marks — Directive 89/104 — Registration of a new trade 
mark — Existence of identical or similar goods or services covered by a similar trade mark — 
Likelihood of confusion with the earlier trade mark — Whether public misled as to the origin 
of the goods or services — Assessment — Criteria 
(Council Directive 89/104, Arts 2 and 4(1 )(b)) 
1. On a proper construction of Article 4(1)(b) 
of First Council Directive 89/104 to 
approximate the laws of the Member States 
relating to trade marks, the distinctive char­
acter of the earlier trade mark, and in par­
ticular its reputation, must be taken into 
account when determining whether the 
similarity between the goods or services 
covered by the two trade marks is suffi­
cient to give rise to the likelihood of con­
fusion. 
The likelihood of confusion must be appre­
ciated globally, taking into account all fac­
tors relevant to the circumstances of the 
case. That global assessment implies some 
interdependence between the relevant fac­
tors, and in particular a similarity between 
the trade marks and between the goods 
and services covered by those marks. 
Accordingly, a lesser degree of similarity 
between those goods or services may be 
offset by a greater degree of similarity 
between the marks, and vice versa. How­
ever, since the more distinctive the earlier 
mark, the greater the risk of confusion, 
trade marks with a highly distinctive char­
acter, either per se or because of the repu­
tation they possess on the market, enjoy 
broader protection than marks with less 
distinctive character. 
Accordingly, for the purposes of Article 
4(1)(b), registration of a trade mark may 
have to be refused, despite a lesser degree 
of similarity between the goods or services 
covered, where the marks are very similar 
and the earlier mark, in particular its repu­
tation, is highly distinctive. Even if such 
an interpretation may make the registra­
tion procedure much lengthier, it is, in any 
event, for reasons of legal certainty and 
proper administration, necessary to ensure 
that trade marks whose use could success­
fully be challenged before the courts are 
not registered. 
2. For the purposes of applying Article 4(1 )(b) 
of First Directive 89/104 to approximate 
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CANON KABUSHIKI KAISHA v METRO-GOLDWYN-MAYER 
the laws of the Member States relating to 
trade marks, even where one trade mark is 
identical to another with a highly distinc­
tive character, it is still necessary to adduce 
evidence of similarity between the goods 
or services covered. In contrast to Article 
4(4)(a), which expressly refers to the situ­
ation in which the goods or services are 
not similar, Article 4(1)(b) provides that 
the likelihood of confusion presupposes 
that the goods or services covered are 
identical or similar. In assessing the simi­
larity of the goods or services concerned, 
all the relevant factors relating to those 
goods or services themselves should be 
taken into account. Those factors include, 
inter alia, their nature, their end users and 
their method of use and whether they are 
in competition with each other or are 
complementary. 
3. There is a likelihood of confusion within 
the meaning of Article 4(1 )(b) of First 
Directive 89/104 to approximate the laws 
of the Member States relating to trade 
marks where the public can be mistaken 
as to the origin of the goods or services in 
question. Article 2 of the directive pro­
vides that a trade mark must be capable of 
distinguishing the goods or services of one 
undertaking from those of other under­
takings, while the tenth recital in the pre­
amble to the directive states that the func­
tion of the protection conferred by the 
mark is primarily to guarantee the indica­
tion of origin. The essential function of 
the trade mark is to guarantee the identity 
of the origin of the marked product to the 
consumer or end user by enabling him, 
without any possibility of confusion, to 
distinguish the product or service from 
others which have another origin. Further­
more, for the trade mark to be able to 
fulfil its essential role in the system of 
undistorted competition which the Treaty 
seeks to establish, it must offer a guarantee 
that all the goods or services bearing it 
have originated under the control of a 
single undertaking which is responsible for 
their quality. 
Accordingly, there may be a likelihood of 
confusion within the meaning of Article 
4(1)(b) even where the public perception 
is that the goods or services have different 
places of production. By contrast, there 
can be no such likelihood where it does 
not appear that the public could believe 
that the goods or services come from the 
same undertaking or, as the case may be, 
from economically-linked undertakings. 
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