Opinion of the Advocate General — ECLI:EU:C:2008:370
Date: 2008-06-26
Language of the case: English
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: United Kingdom

Summary of the Judgment 1. Approximation of laws – Trade marks – Directive 89/104 – Well-known trade mark – Extended protection of non-similar goods or services (Article 4(4)(a) of the Directive) – Condition for the extended protection (Council Directive 89/104, Art. 4(4)(a)) 2. Approximation of laws – Trade marks – Directive 89/104 – Well-known trade mark – Extended protection of non-similar goods or services (Article 4(4)(a) of the Directive) – Condition for the extended protection (Council Directive 89/104, Art. 4(4)(a)) 3. Approximation of laws – Trade marks – Directive 89/104 – Well-known trade mark – Extended protection of non-similar goods or services (Article 4(4)(a) of the Directive) – Condition for the extended protection (Council Directive 89/104, Art. 4(4)(a)) 1. Article 4(4)(a) of First Directive 89/104 on trade marks must be interpreted as meaning that whether there is a link, within the meaning of Case C‑408/01 Adidas-Salomon and Adidas Benelux, between the earlier mark with a reputation and the later mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link, within the meaning of the judgment in that case, between the conflicting marks. The fact that: – the earlier mark has a considerable reputation for certain specific types of goods or services, and – those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and – the earlier mark is unique in respect of any goods or services, does not necessarily imply that there is a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the marks at issue. (see paras 62-64, operative part 1-3) 2. Article 4(4)(a) of First Directive 89/104 on trade marks must be interpreted as meaning that whether a use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. The fact that: – the earlier mark has a considerable reputation for certain specific types of goods or services, and – those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and – the earlier mark is unique in respect of any goods or services, and – for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark to mind, is not sufficient to establish that the use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark, within the meaning of Article 4(4)(a) of Directive 89/104. (see paras 79-80, operative part 4-5) 3. Article 4(4)(a) of Directive 89/104 on trade marks must be interpreted as meaning that: – the use of the later mark may be detrimental to the distinctive character of the earlier mark with a reputation even if that mark is not unique; – a first use of the later mark may suffice to be detrimental to the distinctive character of the earlier mark; – proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. (see para. 81, operative part 6)