Opinion of the Advocate General — ECLI:EU:C:2008:63
Date: 2008-01-31
Language of the case: English
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Consumer protection;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 proprietor of a trade mark, to prevent the use by a third party of an identical or similar sign for identical or similar goods or services (Council Directive 89/104, Art. 5(1) and (2)) 2. Approximation of laws – Trade marks – Directive 89/104 – Right, for the proprietor of a trade mark, to prevent the use by a third party of an identical or similar sign for identical or similar goods or services (Council Directives 89/104, Art. 5(1) and (2), and 84/450, Art. 3a(1)) 3. Approximation of laws – Trade marks – Directive 89/104 – Registration of a new trade mark – Existence of an identical or similar earlier trade mark registered for identical or similar goods or services – Right, for the proprietor of a trade mark, to prevent the use by a third party of an identical or similar sign for identical or similar goods or services – Likelihood of confusion (Council Directive 89/104, Arts 4(1)(b), and 5(1)(b)) 4. Approximation of laws – Trade marks – Directive 89/104 – Right, for the proprietor of a trade mark, to prevent the use by a third party of an identical or similar sign for identical or similar goods or services (Council Directives 89/104, Art. 5(1)(b), and 84/450, Art. 3a) 1. The use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104 concerning trade marks. First, Article 5(1) and (2) of Directive 89/104 must be interpreted as covering the use of a sign identical with, or similar to, the trade mark in respect of goods marketed or services supplied by the third party. Second, an advertisement in which the advertiser compares the goods and services which he markets with those of a competitor is aimed, evidently, at promoting the goods and services of that advertiser. With such an advertisement, the advertiser seeks to distinguish his goods and services by comparing their characteristics with those of competing goods and services. That analysis is confirmed by recital 15 in the preamble to Directive 97/55, in which the Community legislature pointed out that the aim of comparative advertising is to distinguish between the goods and services of the advertiser and those of his competitor. (see paras 34-36) 2. Article 5(1) and (2) of First Directive 89/104 concerning trade marks and Article 3a(1) of Directive 84/450 concerning misleading and comparative advertising, as amended by Directive 97/55, must be interpreted to the effect that the proprietor of a registered trade mark is not entitled to prevent the use by a third party of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions, laid down in Article 3a(1), under which comparative advertising is permitted. However, where the conditions required in Article 5(1)(b) of Directive 89/104 to prevent the use of a sign identical with, or similar to, a registered trade mark are met, a comparative advertisement in which that sign is used cannot satisfy the condition, laid down in Article 3a(1)(d) of Directive 84/450, as amended by Directive 97/55, under which comparative advertising is permitted. First, in the case of similarity between the mark and the sign and between the goods or services, the likelihood of confusion constitutes the specific condition for protection. Article 5(1)(b) of Directive 89/104 is thus designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, there exists a likelihood of confusion on the part of the public. Second, it is apparent from Article 3a(1)(d) of Directive 84/450 that comparative advertising is not permitted if there is a likelihood of confusion between the advertiser and a competitor or between the advertiser’s trade marks, goods or services and those of a competitor. In the light of recitals 13 to 15 of Directive 97/55, the same interpretation must be given to the term ‘confusion’ used in both Article 5(1)(b) of Directive 89/104 and Article 3a(1)(d) of Directive 84/450. (see paras 45-49, 51, operative part 1) 3. The notion of likelihood of confusion is the same in Articles 4(1)(b) and 5(1)(b) of Directive 89/104 concerning trade marks. Article 4(1)(b) of Directive 89/104, however, concerns an application for registration of a mark. Once a mark has been registered, its proprietor has the right to use it as he sees fit so that, for the purposes of assessing whether the application for registration falls within the ground for refusal laid down in that provision, it is necessary to ascertain whether there is a likelihood of confusion with the opponent’s earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered. By contrast, in the case provided for in Article 5(1)(b) of Directive 89/104, the third-party user of a sign identical with, or similar to, a registered mark does not assert any trade mark rights over that sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion. (see paras 65-67) 4. Article 5(1)(b) of First Directive 89/104 concerning trade marks is to be interpreted as meaning that the proprietor of a registered trade mark is not entitled to prevent the use by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark was registered where such use does not give rise to a likelihood of confusion on the part of the public, and that is so irrespective of whether or not the comparative advertisement satisfies all the conditions laid down in Article 3a of Directive 84/450 concerning misleading advertising and comparative advertising, as amended by Directive 97/55, under which comparative advertising is permitted. (see para. 69, operative part 2)