Opinion of the Advocate General — ECLI:EU:C:2007:39
Date: 2007-01-18
Language of the case: French
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: France

Summary of the Judgment 1. Approximation of laws – Trade marks – Directive 89/104 – Right of the trade mark proprietor to prevent use by a third party of an identical sign for identical products – Use of the trade mark for the purposes of Article 5(1)(a) of the directive – Concept (Council Directive 89/104, Art. 5(1)(a)) 2. Approximation of laws – Trade marks – Directive 89/104 – Right of the trade mark proprietor to prevent use by a third party of an identical sign for identical products – Scope (Council Directive 89/104, Art. 5(1)(a)) 3. Approximation of laws – Trade marks – Directive 89/104 – Limitation of trade mark effects (Council Directive 89/104, Art. 6(1)(a)) 1. The unauthorised use by a third party of a company name, trade name or shop name which is identical to an earlier mark constitutes a use ‘in relation to goods or services’ where the use is made for the purpose of distinguishing the goods or services in question. That is the case where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets, or, even where the sign is not affixed, the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party. Conversely, that concept does not cover use limited to identifying a company or designating a business which is being carried on, since such use is not in itself designed to distinguish goods or services. It is for the national court to determine whether use of a sign constitutes use in relation to goods or services for the purposes of Article 5(1) of the directive. (see paras 20-24, operative part) 2. Unauthorised use by a third party of a sign which is identical to a registered mark in relation to goods or services which are identical to those for which that mark is registered cannot be prevented under Article 5(1)(a) of the First Directive 89/104 on trade marks unless it affects or is liable to affect the functions of the mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services. That is the situation where the sign is used by the third party in relation to his goods or services in such a way that consumers are liable to interpret it as designating the origin of the goods or services in question. It is for the national court to determine whether use of such a sign affects or is liable to affect the essential function of the trade mark. (see paras 26-28, operative part) 3. According to Article 6(1)(a) of the First Directive 89/104 on trade marks, a trade mark does not entitle the proprietor to prevent a third party from using his own name or address in the course of trade where that third party uses it in accordance with honest practices in industrial or commercial matters. It is for the national court to assess compliance with that condition, taking account of the extent to which the use of the third party’s name is understood by the relevant public, or at least a significant section of that public, as indicating a link between the third party’s goods or services and the trade-mark proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party ought to have been aware of that. Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which the third party might profit in marketing his goods or services. (see paras 30, 34-35, operative part)