Opinion of the Advocate General — ECLI:EU:C:2002:212
Date: 2002-03-21
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 — Trademarks — Directive 89/104 — Right for the owner of a 
trade mark to contest its use by a third party — Protection against use other than for the 
purpose of distinguishing goods or services — Scope of protection — Determination to 
be left to national legal orders 
(Council Directive 89/104, Art. 5(5)) 
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SUMMARY — CASE C-23/01 
Under Article 5(5) of First Directive 89/104 
relating to trade marks, reinforced protec­
tion of a trade mark's distinctive character 
or reputation against certain uses of a sign 
other than for the purpose of distinguishing 
goods or services is not covered by Com­
munity harmonisation. 
That provision must therefore be inter­
preted as meaning that a Member State 
may, if it sees fit, and subject to such 
conditions as it may determine, protect a 
trade mark against use of a sign other than 
for the purpose of distinguishing goods or 
services, where use of that sign without due 
cause takes unfair advantage of, or is 
detrimental to, the distinctive character or 
the repute of the trade mark. The Member 
States may therefore adopt no legislation or 
they may, subject to such conditions as they 
may determine, require that the sign and 
the trade mark be either identical or 
similar, or that there be some other con­
nection between them. 
(see paras 31, 35-36, 
operative part) 
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