Judgment of the Court (Sixth Chamber) of 23 October 2003 in Case C-408/01 (Reference for a preliminary ruling from the Hoge Raad der Nederlanden): Adidas-Salomon AG, formerly Adidas AG, Adidas Benelux BV v Fitnessworld Trading Ltd (Directive 89/104/EEC — Article 5(2) — Trade marks with a reputation — Protection against use of a sign in relation to identical or similar goods or services — Degree of similarity between the mark and the sign — Effect on the public — Sign viewed as an embellishment)
Date: 2003-12-13
Institutions: Court of Justice
Subjects: brand name, interpretation of the law, patents licence, trade mark, trade-mark law

13.12.2003

EN

Official Journal of the European Union

C 304/5

— Article 41(1) precludes the introduction into the national
legislation of a Member State of a requirement of a work permit
in order for an undertaking established in Turkey to provide
services in the territory of that State, if such a permit was not
already required at the time of the entry into force of the
Additional Protocol;

— it is for the national court to determine whether the national
legislation applied to Turkish nationals such as the applicants
in the main proceedings is less favourable than that applicable
at the time of the entry into force of the Additional Protocol.

court between Adidas-Salomon AG, formerly Adidas AG,
Adidas Benelux BV and Fitnessworld Trading Ltd, on the
interpretation of Article 5(2) of First Council Directive 89/
104/EEC of 21 December 1988 approximating the laws of the
Member States relating to trade marks (OJ 1989 L 40, p. 1),
the Court (Sixth Chamber), composed of: J.-P. Puissochet,
President of the Chamber, C. Gulmann (Rapporteur), F. Ma-
cken, N. Colneric and J.N. Cunha Rodrigues, Judges; F.G. Jacobs,
Advocate General; M.-F. Contet, Principal Administrator, for
the Registrar, has given a judgment on 23 October 2003, in
which it has ruled:

(1) OJ C 303 of 27.10.2001, OJ C 348 of 08.12.2001.

1. A Member State, where it exercises the option provided
by Article 5(2) of First Council Directive 89/104/EEC of
21 December 1988 to approximate the laws of the Member
States relating to trade marks, is bound to grant the specific
protection in question in cases of use by a third party of a later
mark or sign which is identical with or similar to the registered
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.

2.

3.

The protection conferred by Article 5(2) of Directive 89/104 is
not conditional on a finding of a degree of similarity between
the mark with a reputation and the 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.

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
protection conferred by Article 5(2) of Directive 89/104 where
the degree of similarity 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 necessarily does not 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.

JUDGMENT OF THE COURT

(Sixth Chamber)

of 23 October 2003

in Case C-408/01 (Reference for a preliminary ruling from
the Hoge Raad der Nederlanden): Adidas-Salomon AG,
formerly Adidas AG, Adidas Benelux BV v Fitnessworld
Trading Ltd (1)

(Directive 89/104/EEC — Article 5(2) — Trade marks with
a reputation — Protection against use of a sign in relation
to identical or similar goods or services — Degree of
similarity between the mark and the sign — Effect on the
public — Sign viewed as an embellishment)

(2003/C 304/07)

(Language of the case: Dutch)

(Provisional translation; the definitive translation will be published
in the European Court Reports)

(1) OJ C 3 of 5.1.2002.

In Case C-408/01: Reference to the Court under Article 234
EC by the Hoge Raad der Nederlanden (Netherlands) for a
preliminary ruling in the proceedings pending before that