Opinion of the Advocate General — ECLI:EU:C:2006:41
Date: 2006-01-17
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: Belgium

Summary of the Judgment Approximation of laws – Trade marks – Directive 89/104 – Rights conferred by a trade mark (Council Directive 89/104, Arts 5(1) and 12(2)) Article 5(1) of First Directive 89/104 on trade marks must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used, since genuine and effective protection of the proprietor’s rights will not be safeguarded if the likelihood of confusion was assessed at a later date. Where the competent national court finds that the sign in question constituted an infringement of the mark at that time, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor’s rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease use of that sign. It is not appropriate, however, to order such measures if it has been established that the trade mark in question has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked. (see paras 17-18, 20, 24-25, 37, operative part 1-3)