Opinion of the Advocate General — ECLI:EU:C:2002:27
Date: 2002-01-17
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: France

Summary of the Judgment 
Approximation of laws — Trademarks — Directive 89/104 — Right for the owner of a 
registered trade mark to contest its unlawful use — Sign identical with the trade mark — 
Sign reproducing, without any modification or addition, all the elements constituting the 
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SUMMARY — CASE C-291/00 
trade mark or, viewed as a whole, containing differences so insignificant that they may go 
unnoticed by an average consumer — Interpretation applicable both to Article 5(1)(a) 
and to Article 4(1)(a) of the directive 
(Council Directive 89/104, Arts 4(1)(a), and 5(1)(a) and (b)) 
Article 5(1)(a) of First Directive 89/104 
relating to trade marks, which determines 
the circumstances in which the proprietor 
of a trade mark is entitled to prevent third 
parties from using signs which are identical 
with his trade mark, must be interpreted as 
meaning that a sign is identical with the 
trade mark where it reproduces, without 
any modification or addition, all the 
elements constituting the trade mark or 
where, viewed as a whole, it contains 
differences so insignificant that they may 
go unnoticed by an average consumer who 
is deemed to be reasonably well informed, 
reasonably observant and circumspect. 
Contrary to Article 5(1)(b) of that directive, 
which is designed to apply only if, because 
of the identity or similarity between the 
signs and marks and between the goods or 
services which they designate, there exists a 
likelihood of confusion on the part of the 
public, Article 5(1)(a) does not require 
evidence of such a likelihood in order to 
afford absolute protection in the case of 
identity of the sign and the trade mark and 
of the goods or services. Accordingly, the 
criterion of identity of the sign and the 
trade mark must be interpreted strictly. The 
very definition of identity implies that the 
two elements compared should be the same 
in all respects. Indeed, the absolute pro­
tection in the case of a sign which is 
identical with the trade mark in relation 
to goods or services which are identical 
with those for which the trade mark is 
registered, which is guaranteed by 
Article 5(1)(a), cannot be extended beyond 
the situations for which it was envisaged, in 
particular, to situations which are more 
specifically protected by Article 5(1)(b). 
Moreover, since the conditions of appli­
cation of Article 5(1)(a) correspond essen­
tially to those of Article 4(1)(a) of the 
directive, the interpretation thus adopted of 
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LTJ DIFFUSION 
Article 5(1)(a) is transposable, mutatis 
mutandis, to Article 4(1)(a) which provides 
that a registered trade mark is to be liable 
to be declared invalid if it is identical with 
an earlier trade mark, and the goods or 
services for which the trade mark is regis­
tered are identical with the goods or 
services for which the earlier trade mark 
is protected. 
(see paras 40-41, 43, 48-54, 
operative part) 
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