Opinion of the Advocate General — ECLI:EU:C:2000:56
Date: 2000-01-27
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: Netherlands

Summary of the Judgment 
Approximation of laws — Trade marks — Directive 89/104 — Right for the owner of a 
registered trade mark to contest its unlawful use — Particularly distinctive character per se 
or because of the reputation the mark enjoys — Sign used for identical or similar 
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SUMMARY — CASE C-425/98 
products — Likelihood of association, in the strict sense, between the sign and the 
mark — Likelihood not giving grounds for presuming a likelihood of confusion — 
Necessity of evidence of the existence of a likelihood of confusion 
(Directive 89/104, Art. 5(1)(b)) 
Article 5(1)(b) of First Directive 89/104 on 
trade marks cannot be interpreted as mean­
ing that where 
— a trade mark has a particularly distinc­
tive character, either per se or because 
of the reputation it enjoys with the 
public, and 
— a third party, without the consent of 
the proprietor of the mark, uses, in the 
course of trade in goods or services 
which are identical with, or similar to, 
those for which the trade mark is 
registered, a sign which so closely 
corresponds to the mark as to give rise 
to the possibility of its being associated 
with that mark, 
the exclusive right enjoyed by the proprie­
tor entitles him to prevent the use of the 
sign by that third party if the distinctive 
character of the mark is such that the 
possibility of such association giving rise to 
confusion cannot be ruled out. 
The reputation of a mark does not give 
grounds for presuming the existence of a 
likelihood of confusion simply because of 
the existence of a likelihood of association 
in the strict sense. A positive finding of the 
existence of a likelihood of confusion, 
which constitutes the matter to be proved, 
is necessary. 
(see paras 39, 41-42 and operative part) 
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