Opinion of the Advocate General — ECLI:EU:C:1998:575
Date: 1998-11-26
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: Belgium

Summary of the Judgment 
Approximation of laws — Trade marks — Directive 89/104 — Protection of the trade 
mark extended to non-similar products or services — Conditions — Reputation of the 
mark in the Member State — Meaning — Criteria to be applied 
(Council Directive 89/104, Art. 5(2)) 
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SUMMARY — CASE C-3 75/97 
Article 5(2) of First Council Directive 
89/104 concerning trade marks — which 
extends the protection of a registered trade 
mark to products or services which are 
neither identical nor similar to those for 
which the mark is registered, where the 
latter has a reputation in the Member State 
and there is clear evidence that the mark is 
being unfairly harmed — is to be inter­
preted as meaning that, in order to satisfy 
the requirement relating to reputation, a 
registered trade mark must be known by a 
significant part of the public concerned by 
the products or services which it covers. In 
examining whether this condition is ful­
filled, the national court must take into 
consideration all the relevant facts of the 
case, in particular the market share held by 
the trade mark, the intensity, geographical 
extent and duration of its use, and the size 
of the investment made by the undertaking 
in promoting it. Territorially, the condition 
is fulfilled when the trade mark has a 
reputation in a substantial part of the 
territory of a Member State since, failing 
closer definition of requirements under 
Community law on this point, a trade 
mark cannot be required to have a reputa­
tion 'throughout' the territory of the Mem­
ber State. 
Accordingly, in the Benelux territory, it is 
sufficient for the mark to be known by a 
significant part of the public concerned in a 
substantial part of that territory, which 
may consist of a part of one of the Benelux 
countries. 
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