Judgment;Summary — ECLI:EU:C:2025:558
Date: 2025-07-10
Language of the case: Swedish
Court formation: Eighth Chamber
Procedure: Reference for a preliminary ruling
Origin: Sweden

Translation C-365/24 – 1 
Case C-365/24 
Request for a preliminary ruling 
Date lodged: 
20 May 2024 
Referring court: 
Svea hovrätt, Patent- och marknadsöverdomstolen (Sweden) 
Date of the decision to refer: 
20 May 2024 
Appellant: 
Purefun Group AB 
Respondent: 
Doggy AB 
  
[…] 
Respondent 
Doggy AB, […] 
SUBJECT MATTER 
Trade mark infringement and so forth; presently a reference for a preliminary 
ruling from the Court of Justice of the European Union 
DECISION UNDER APPEAL 
Judgment of the Patent- och marknadsdomstolen (Patent and Market Court) of 
16 December 2022 […] The Patent- och marknadsöverdomstolen (Patent and 
Market Court of Appeal) [makes] the following 
ORDER (to be notified on 20 May 2024) 
1. The Patent and Market Court of Appeal orders that the matter be referred to 
the Court of Justice of the European Union for a preliminary ruling pursuant 
to Article 267 of the Treaty on the Functioning of the European Union and 
EN 
REQUEST FOR A PRELIMINARY RULING OF 20. 5. 2024 – CASE C-365/24 
 
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that a request for a preliminary ruling be submitted to the Court of Justice in 
accordance with Annex A to this record. 
2. The Patent and Market Court of Appeal orders that proceedings be stayed 
pending a ruling of the Court of Justice of the European Union. 
The order is not subject to appeal. 
[…] 
The subject matter of the main proceedings and the relevant facts 
1 The parties to the case are Doggy AB (Doggy) and Purefun Group AB (Purefun). 
2 Doggy is a producer of dog and cat food and the company’s object is, according to 
its business description, inter alia to manufacture and trade in food products and 
other products for animals and to engage in activities compatible therewith. The 
food products are sold in shops and on websites provided by retailers. 
3 Purefun is a retailer of products for dog owners, including dog food and dog 
treats. Sales take place via the company’s website under the domain name 
doggie.se. 
Proceedings before the Patent and Market Court 
4 In November 2021, Doggy brought an action against Purefun before the Patent 
and Market Court. In that case, Doggy claimed, in so far as is relevant, that the 
court should prohibit Purefun, subject to a fine, from using the sign DOGGIE in 
the course of trade when selling foodstuffs for animals and other products and 
accessories for animals and order Purefun to pay Doggy compensation of 150 000 
kronor (SEK), plus a set amount of interest. 
5 As grounds for its action, in so far as is relevant, Doggy submitted, in essence, as 
follows. Doggy is the proprietor of, inter alia, the nationally registered word mark 
DOGGY under Class 31 in respect of foodstuffs for animals and of the company 
name Doggy AB. Purefun carries out its activities under the domain name 
doggie.se. Purefun markets and sells various products and accessories for dogs, 
including foodstuffs for animals and chewing objects. Its business activity is 
conducted under the sign DOGGIE. Doggy has not authorised Purefun to use that 
sign. There is identity, or in any event an extremely high degree of similarity, 
between the goods and services covered by Doggy’s trade marks and company 
name, on the one hand, and the services provided by Purefun under the sign 
DOGGIE, on the other hand. Moreover, the latter sign is extremely similar to 
Doggy’s trade mark and company name. Purefun is infringing Doggy’s exclusive 
rights in the trade mark and company name. It is reasonable for Purefun to be 
ordered to pay compensation of SEK 150 000 for the use of the trade mark and 
company name. 
PUREFUN GROUP 
 
3 
6 Purefun contested the claims put forward by Doggy and its assertion that Purefun 
is infringing its trade marks and company name, since, in the view of Purefun, the 
signs are devoid of distinctiveness. According to Purefun, the distinctiveness is, in 
any event, very weak. Furthermore, the similarity between the goods and the trade 
mark is limited and there is therefore no likelihood of confusion. According to 
Purefun, sales on the doggie.se website largely concern goods for dog owners 
other than dog food and dog treats. 
7 The Patent and Market Court upheld the claims put forward by Doggy. The court 
thus ruled that there was a likelihood of confusion between Doggy’s trade marks 
and company name, on the one hand, and Purefun’s sign, on the other, and that 
Purefun’s use [of that sign] infringed Doggy’s rights. In the view of the Patent and 
Market Court, there were therefore grounds for prohibiting Purefun from using the 
sign and ordering Purefun to pay reasonable compensation. 
8 The Patent and Market Court first examined whether Purefun’s sign was liable to 
be confused with Doggy’s word mark, which it found to be the case, and went on 
to conclude that there was no reason to make a different assessment in relation to 
the company name. 
Proceedings before the Patent and Market Court of Appeal 
9 Purefun has appealed against the judgment of the Patent and Market Court, 
claiming that the Patent and Market Court of Appeal should dismiss the claims put 
forward by Doggy. The parties have essentially made the same arguments before 
the Patent and Market Court of Appeal as they did before the Patent and Market 
Court. 
10 In the proceedings before the Patent and Market Court of Appeal, questions have 
arisen concerning the interpretation of EU law. 
Relevant provisions of national and European Union law 
Swedish law 
The Varumärkeslagen (2010:1877) (Law No 1877 of 2010 on trade marks; ‘the 
Law on trade marks’) 
11 The law implements, inter alia, Directive (EU) 2015/2436 of the European 
Parliament and of the Council of 16 December 2015 to approximate the laws of 
the Member States relating to trade marks (‘the Trade Marks Directive’). 
12 Under Paragraph 8 of Chapter 1 of the Law on trade marks, the proprietor of a 
company name or other commercial designation has exclusive rights in the sign as 
a trade sign. 
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13 Paragraph 10 of Chapter 1 of the Law on trade marks further provides that the 
exclusive right in a trade sign under Paragraph 8 of Chapter 1 of the Law on trade 
marks means that no person other than the proprietor may, without the latter’s 
consent, use any sign for goods and services in the course of trade if the sign is 
identitical with or similar to the trade sign and is used in relation to goods or 
services of the same or similar kind, if there exists a likelihood of confusion, 
including the risk that use of the sign may lead to the impression that there is an 
association between the user of the sign and the proprietor of the trade sign. 
14 In accordance with Paragraph 3 of Chapter 8 of the Law on trade marks, a court 
may, on application by the proprietor of a trade sign under Paragraph 8 of Chapter 
1 of the Law on trade marks, prohibit a person who commits a trade mark 
infringement from continuing to do so, under penalty of a fine. 
15 Under Paragraph 4 of Chapter 8 of the Law on trade marks, a person who 
infringes a trade mark is to pay compensation for the use thereof. 
Lagen (2018:1653) om företagsnamn (Law No 1653 of 2018 on company names; 
‘the Law on company names’) 
16 Under Paragraph 1 of Chapter 1 of the Law on company names, a company name 
is the denomination under which a trader carries out its activities. Under the third 
subparagraph thereof, the term ‘commercial designation’ is the common term for 
company names and secondary signs. 
17 Under Paragraph 2 of Chapter 1 of the Law on company names, a trader acquires 
exclusive rights in a company name through registration or by virtue of use. 
18 Under Paragraph 1 of Chapter 2 of the Law on company names, a company name 
may be registered only if it is capable of distinguishing the proprietor’s activity 
from that of others. The second subparagraph of the provision in question states 
that the length of time and the extent of use of the company name is to be taken 
into account when assessing whether a company name has distinctive character. 
Furthermore, if the company name consists solely of a general designation of the 
nature of the activity or of a product or service offered in that activity or if the 
company name consists solely of a commonly used place name or the like, the 
company name is not in itself to be considered as having distinctive character. 
Where the company name includes a designation such as limited liability 
company, partnership or commercial association or an abbreviation of such a 
designation, that designation is to be disregarded in the assessment. 
EU law 
Treaty on the Functioning of the European Union (TFEU) 
19 Articles 34 and 35 TFEU provide that quantitative restrictions on imports and 
exports and all measures having equivalent effect are to be prohibited between 
Member States.  
PUREFUN GROUP 
 
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20 Article 36 TFEU provides that the provisions of Articles 34 and 35 TFEU are not 
to preclude prohibitions or restrictions on imports or exports justified on grounds, 
inter alia, of the protection of industrial and commercial property. 
The Trade Marks Directive 
21 Under Article 1 thereof, the Trades Mark Directive applies to every trade mark in 
respect of goods or services which is the subject of registration or of an 
application for registration in a Member State as, inter alia, an individual trade 
mark. 
22 Article 5(1)(b) provides that a trade mark is not to be registered or, if registered, is 
to be liable to be declared invalid where because of its identity with, or similarity 
to, the earlier trade mark and the identity or similarity of the goods or services 
covered by the trade marks, there exists a likelihood of confusion on the part of 
the public; the likelihood of confusion includes the likelihood of association with 
the earlier trade mark. 
23 Under Article 5(4)(a), any Member State may provide that another sign used in 
the course of trade is to preclude registration of a later trade mark if it was 
acquired prior to the date of application for registration of the subsequent trade 
mark and the sign confers on its proprietor the right to prohibit the use of a 
subsequent trade mark. Article 5(4)(b)(iv) further provides that the use of the trade 
mark may be prohibited by virtue of an earlier right, other than the rights referred 
to in paragraph 2 and point (a) of paragraph 4, and in particular an industrial 
property right. 
24 Under Article 10(1), the registration of a trade mark is to confer on the proprietor 
exclusive rights therein. Under Article 10(2)(b), the proprietor of that registered 
trade mark is to be entitled to prevent all third parties not having his consent from 
using in the course of trade, in relation to goods or services, any sign where the 
sign is identical with, or similar to, the trade mark and is used in relation to goods 
or services which are identical with, or similar to, the goods or services for which 
the trade mark is registered, if there exists a likelihood of confusion on the part of 
the public; the likelihood of confusion includes the likelihood of association 
between the sign and the trade mark. Article 10(3)(d) further provides that using 
the sign as a trade or company name or part of a trade or company name, in 
particular, may be prohibited under paragraph 2. 
25 Under Article 39(1), goods and services in respect of which trade mark 
registration is applied for are to be classified in conformity with the system of 
classification established by the Nice Agreement Concerning the International 
Classification of Goods and Services for the Purposes of the Registration of Marks 
of 15 June 1957. Article 39(2) further provides that the goods and services for 
which protection is sought are to be identified by the applicant with sufficient 
clarity and precision to enable the competent authorities and economic operators, 
on that sole basis, to determine the extent of the protection sought. 
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The grounds for the referral by the Patent and Market Court of Appeal of 
questions about the interpretation of EU law 
Cross-protection 
26 Under the Law on trade marks, the proprietor of a company name has exclusive 
rights therein as a trade sign. That means, for example, that the use of a trade sign 
that is liable to be confused with another’s company name may constitute an 
infringement of the exclusive right in the company name under trade mark law 
(so-called ‘cross-protection’). Under Paragraph 3 of Chapter 1 of the Law on 
company names, the proprietor of a trade mark or other trade sign similarly has an 
exclusive right in the sign as a commercial designation. 
27 Thus, where a party claims that the use of a trade sign infringes the trade mark 
protection derived from registration of a company name, it is the provisions of the 
Law on trade marks that must be applied to the issue of infringement. The 
Swedish Law on trade marks implements the Trade Marks Directive. Although the 
law on company names is not harmonised at EU level in the same way as trade 
mark law, issues relating to company names thus fall within the harmonised 
sphere as a result of cross-protection. 
28 The Trade Marks Directive contains no provision on cross-protection 
corresponding to Paragraph 8 of Chapter 1 of the Law on trade marks. However, 
Article 5(4)(a) of the Trade Marks Directive states that Member States may 
provide that a commercial designation (referred to in the directive as ‘another sign 
used in the course of trade’) may preclude the registration of a subsequent trade 
mark if the sign entitles the proprietor to prohibit the use of a subsequent trade 
mark. However, the directive does not specify the conditions under which the 
proprietor of a company name may be authorised to preclude the use of a sign as a 
trade mark. 
Trade mark rights derived from a registered company name 
29 The registration of a company name means that the proprietor of that name is 
automatically afforded protection as if it were a registered trade mark. Under the 
present regime in national law, there is no requirement for a trader to have used its 
company name as a trade sign in order for the sign to be protected as a trade sign. 
Thus, for example, even if a company name has not been used as a trade sign at 
all, the proprietor of the company name still has protection against someone else 
using a trade sign which is liable to be confused with the company name. In such 
a case, the protection can be said to apply to the company name as a potential 
trade sign. 
30 However, the trade mark rights derived from a registered company name only 
apply within the sector or the area of activity stated in the business description 
which the company has registered together with the company name. The business 
activity must be stated in terms of its nature and so clearly described and defined 
that it can be easily understood by anyone who wants information about the 
PUREFUN GROUP 
 
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company. It is therefore not enough to state in the business description, for 
example, that the company is to conduct trade, but in that case it is also necessary 
to state the kind of goods the company is to trade in. The company must therefore 
state the sector or sectors of business in which the company will conduct its 
activities. However, there are no other requirements as to the presentation of the 
business description, such as the classification system or requirements relating to 
clarity and accuracy which apply to registered trade marks. 
31 Thus, when a trade sign is compared to a company name, the similarity of goods 
and services is assessed on the basis of whether the trade sign concerns goods or 
services related to the business description registered in respect of the company 
name. Since there is no requirement as to usage of the company name as a trade 
sign, the wording of the Swedish provision in Paragraph 8 of Chapter 1 of the Law 
on trade marks could be considered as expressing broader trade mark protection 
through the registration of a company name than through the registration of a 
trade mark. 
32 Since there is likewise no classification system or explicit requirements as to 
clarity and precision in relation to business descriptions, a situation could also 
arise in a case of confusion where it is difficult to assess which kinds of goods or 
services are to be compared in an assessment of the similarity of goods or 
services. The assessment must then in reality be made in such a way that the 
goods or services are assessed in relation to the sector in which the company name 
is used. That specific rule in relation to trade mark rights is also of relevance to 
the scope of the protection afforded to the company name under trade mark law 
and could be considered as expressing broader protection under trade mark law 
through the registration of a company name than through the registration of a 
trade mark. 
33 The requirement relating to genuine use is a material condition for trade mark 
protection under the directive. The question therefore arises as to whether the 
directive precludes national law from affording trade mark protection to a 
company name without it being used as an indication of origin for goods and 
services. Similarly, the question arises as to whether trade mark protection may 
relate to the kind of goods and services which are covered by a business 
description but of which no genuine use has been made in the field to which the 
business description relates. 
34 Such a national rule could, in principle, make it possible to circumvent the 
requirement to state clearly and precisely the kinds of goods or services for which 
trade mark protection is sought. Thus, a Member State granting trade mark 
protection to a trader to a greater extent or under different conditions than those 
provided for in the Trade Marks Directive could create obstacles to other traders 
selling goods or services across borders because they are claimed to infringe trade 
mark rights in a Member State which are not based on EU law. That may thus 
affect the free movement of goods and services. That raises the question whether a 
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national rule that diverges from the Trade Marks Directive, as in the present case, 
creates obstacles to traders operating across borders. 
35 In order for the Patent and Market Court of Appeal to be able to give judgment, it 
requires answers to the questions below. 
The questions concerning interpretation 
36 The questions concern the interpretation of the Trade Marks Directive and are as 
follows. 
1. In the light of the Treaty on the Functioning of the European Union 
and the fundamental principle of the free movement of goods and 
services under EU law, is it compatible with the provisions of the 
Trade Marks Directive, in particular Articles 1 and 5(4), to have a 
system under national law whereby an earlier right in a company name 
may constitute a basis for prohibiting the use of a subsequent trade 
sign in the entire field of activity in respect of which the company 
name is registered and without any requirement that the company 
name must have been used to distinguish goods or services? 
2. If the answer to Question 1 is in the negative, is it compatible with the 
Trade Marks Directive and EU law in general for a company name, 
which is used per se as a sign to distinguish certain kinds of goods or 
services in the field of activity in respect of which the company name 
is registered, to constitute grounds for prohibiting the use of a 
subsequent trade sign in connection with kinds of goods or services 
other than those in respect of which the company name is used as a 
sign? 
[…]