CELEX: C2003/304/07
Language: en
Date: 2003-12-13 00:00:00
Title: 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)

13.12.2003               EN                            Official Journal of the European Union                                                 C 304/5
—     Article 41(1) precludes the introduction into the national               court between Adidas-Salomon AG, formerly Adidas AG,
      legislation of a Member State of a requirement of a work permit          Adidas Benelux BV and Fitnessworld Trading Ltd, on the
      in order for an undertaking established in Turkey to provide             interpretation of Article 5(2) of First Council Directive 89/
      services in the territory of that State, if such a permit was not        104/EEC of 21 December 1988 approximating the laws of the
      already required at the time of the entry into force of the              Member States relating to trade marks (OJ 1989 L 40, p. 1),
      Additional Protocol;                                                     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,
—     it is for the national court to determine whether the national           Advocate General; M.-F. Contet, Principal Administrator, for
      legislation applied to Turkish nationals such as the applicants          the Registrar, has given a judgment on 23 October 2003, in
      in the main proceedings is less favourable than that applicable          which it has ruled:
      at the time of the entry into force of the Additional Protocol.
(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.
                  JUDGMENT OF THE COURT
                           (Sixth Chamber)                                     2.   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
                        of 23 October 2003
                                                                                    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
in Case C-408/01 (Reference for a preliminary ruling from                           a link between the sign and the mark.
the Hoge Raad der Nederlanden): Adidas-Salomon AG,
formerly Adidas AG, Adidas Benelux BV v Fitnessworld
                            Trading Ltd (1)
                                                                               3.   The fact that a sign is viewed as an embellishment by the
(Directive 89/104/EEC — Article 5(2) — Trade marks with                             relevant section of the public is not, in itself, an obstacle to the
a reputation — Protection against use of a sign in relation                         protection conferred by Article 5(2) of Directive 89/104 where
to identical or similar goods or services — Degree of                               the degree of similarity is none the less such that the relevant
similarity between the mark and the sign — Effect on the                            section of the public establishes a link between the sign and the
           public — Sign viewed as an embellishment)                                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
                           (2003/C 304/07)                                          conditions of the protection conferred by Article 5(2) of
                                                                                    Directive 89/104 is then not satisfied.
                     (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