Opinion of the Advocate General — ECLI:EU:C:2002:373
Date: 2002-06-13
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: United Kingdom

Summary of the Judgment 
1. Approximation of laws — Trade marks — Directive 89/104 — Right for the owner 
of a trade mark to contest the use by a third party of an identical sign on identical 
goods — Purpose — Limits 
(Council Directive 89/104, Art. 5(l)(a)) 
I - 10273 
SUMMARY — CASE C-206/01 
2. Approximation of laws — Trade marks — Directive 89/104 — Right for the owner 
of a trade mark to contest the use by a third party of an identical sign on identical 
goods — Scope — Use perceived as a badge of support for or loyalty or affiliation to 
the trade mark proprietor — Not relevant 
(Council Directive 89/104, Arts 5(1) (a) and 6(1)) 
1. The e x c l u s i v e r i g h t u n d e r 
Article 5(1 )(a) of the First Directive 
89/104 on trade marks was conferred 
in order to enable the trade mark 
proprietor to protect his specific inter­
ests as proprietor, that is, to ensure that 
the trade mark can fulfil its functions. 
The exercise of that right must there­
fore be reserved to cases in which a 
third party's use of the sign affects or is 
liable to affect the functions of the 
trade mark, in particular its essential 
function of guaranteeing to consumers 
the origin of the goods. 
The exclusive nature of the right con­
ferred by a registered trade mark on its 
proprietor under Article 5(1)(a) of the 
directive can be justified only within 
the limits of the application of that 
article. 
(see paras 51-52) 
2. In a situation which is not covered by 
Article 6(1) of the First Directive 
89/104 on trade marks, where a third 
party uses in the course of trade a sign 
which is identical to a validly registered 
trade mark on goods which are ident­
ical to those for which it is registered, 
the trade mark proprietor is entitled to 
prevent that use where, having regard 
to the circumstances of the case, in 
accordance with Article 5(1)(a) of that 
directive, it is such as to create the 
impression that there is a material link 
in the course of trade between the 
goods concerned and the trade mark 
proprietor and is thus liable to jeop­
ardise the guarantee of origin which 
constitutes the essential function of the 
mark. It is immaterial that, in the 
context of that use, the sign is per­
ceived as a badge of support for or 
loyalty or affiliation to the trade mark 
proprietor. 
(see paras 56, 60, 62, operative part) 
I - 10274