Opinion of the Advocate General — ECLI:EU:C:1998:522
Date: 1998-10-29
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: Germany

Summary of the Judgment 
1. Preliminary rulings —Jurisdiction of the national courts — Application of provisions 
interpreted by the Court 
(EC Treaty, Art. 177 (now Art. 234 EC)) 
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SUMMARY — CASE C-342/97 
2. Approximation of laws — Trade marks — Directive 89/104 — Right for the owner of 
a registered trade mark to contest its unlawful use — Sign used for identical or similar 
products — Mere aural similarity between a trade mark and a sign does not preclude 
the likelihood of confusion — Assessment of the likelihood of confusion — Criteria — 
Determination whether a trade mark has a distinctive character — Criteria 
(Council Directive 89/104, Art. S(l)(b)) 
1. In accordance with the division of 
functions provided for by Article 177 
of the Treaty (now Article 234 EC), the 
role of the Court of Justice is limited to 
providing the national court with the 
guidance on interpretation necessary to 
resolve the case before it, while it is for · 
the national court to apply the rules of 
Community law, as interpreted by the 
Court, to the facts of the case under 
consideration. 
2. It is possible that mere aural similarity 
between a trade mark and a sign, used 
for identical or similar products, may 
create a likelihood of confusion within 
the meaning of Article 5(1 )(b) of First 
Directive 89/104 on trade marks. The 
more similar the goods or services 
covered and the more distinctive the 
earlier mark, the greater will be the 
likelihood of confusion. 
In order to determine the distinctive 
character of a mark and, accordingly, 
to assess whether it is highly distinc­
tive, it is necessary to make a global 
assessment of the greater or lesser 
capacity of the mark to identify the 
goods or services for which it has been 
registered as coming from a particular 
undertaking, and thus to distinguish 
those goods or services from those of 
other undertakings. In making that 
assessment, account should be taken 
of all relevant factors and, in particular, 
of the inherent characteristics of the 
mark, including the fact that it does or 
does not contain an element descriptive 
of the goods or services for which it has 
been registered. It is not possible to 
state in general terms, for example by 
referring to given percentages relating 
to the degree of recognition attained by 
the mark within the relevant section of 
the public, when a mark has a strong 
distinctive character. 
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