Opinion of the Advocate General — ECLI:EU:C:2003:404
Date: 2003-07-10
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: Netherlands

SUMMARY — CASE C-408/01 
Summary of the Judgment 
1. Approximation of laws — Trade marks — Directive 89/104 — Trade mark with a 
reputation — Option of providing protection for extending to non-similar goods or 
services (Article 5(2) of the directive) — Obligation on Member States exercising this 
option to also provide that protection in case of use of a sign for goods or services 
which are identical or similar 
(Council Directive 89/104, Art. 5(2)) 
2. Approximation of laws — Trade marks — Directive 89/104 — Trade mark with a 
reputation — Protection of the trade mark extended to non-similar goods or services 
(Article 5(2) of the directive) — Degree of similarity between the mark and the later 
sign 
(Council Directive 89/104, Art. 5(2)) 
3. Approximation of laws — Trade marks — Directive 89/104 — Trade mark with a 
reputation — Protection of the trade mark extended to non-similar goods or services 
(Article 5(2) of the directive) — Perception of the later sign by the relevant section of 
the public as an embellishment — Effect 
(Council Directive 89/104, Art. 5(2)) 
1. A Member State, where it exercises the 
option provided by Article 5(2) of First 
Directive 89/104 relating to trade 
marks, consisting of providing specific 
protection for trade marks with a 
reputation, is bound to grant that 
protection in cases of use by a third 
party of a later mark or sign which is 
identical with or similar to the regis­
tered mark with a reputation, both in 
relation to goods or services which are 
not similar and in relation to goods or 
services which are identical with or 
similar to those covered by that mark. 
(see para. 22, operative part 1) 
2. The specific protection conferred by 
Article 5(2) of First Directive 89/104 
relating to trade marks on trade marks 
with a reputation is not conditional on 
a finding of a degree of similarity 
between the mark with a reputation 
and the later sign such that there exists 
a likelihood of confusion between them 
on the part of the relevant section of 
the public. It is sufficient for the degree 
of similarity between the mark with a 
reputation and the sign to have the 
effect that the relevant section of the 
public establishes a link between the 
sign and the mark. 
(see para. 31, operative part 2) 
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ADIDAS-SALOMON AND ADIDAS BENELUX 
3. The fact that a sign is viewed as an 
embellishment by the relevant section 
of the public is not in itself an obstacle 
to the specific protection conferred by 
Article 5(2) of First Directive 89/104 
relating to trade marks on trade marks 
with a reputation, where the degree of 
similarity between the trade mark with 
a reputation and the later sign is none 
the less such that the relevant section of 
the public establishes a link between 
the sign and the mark. By contrast, 
where, according to a finding of fact by 
the national court, the relevant section 
of the public views the sign purely as an 
embellishment, it docs not necessarily 
establish any link with a registered 
mark, with the result that one of the 
conditions of the protection conferred 
by Article 5(2) of Directive 89/104 is 
then not satisfied. 
(see para. 41, operative part 3) 
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