Specsavers International Healthcare Ltd and Others v Asda Stores Ltd.
Date: 2013-07-18
21. It should be noted, next, that it follows directly from the wording of the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 that the use of the trade mark in a form which is different from the form in which it was registered is considered as a use for the purposes of the first subparagraph of that article, to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed.
22. For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see, to that effect, Joined Cases C‑468/01 P to C‑472/01 P Procter & Gamble  v OHIM  [2004] ECR I‑5141, paragraph 32; Case C‑304/06 P  Eurohypo  v OHIM  [2008] ECR I‑3297, paragraph 66; and Case C‑311/11 P Smart Technologies  v OHIM  [2012] ECR I‑0000, paragraph 23).
23. That distinctive character of a registered trade mark may be the result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases, it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service at issue as originating from a given undertaking (see, by analogy, Case C‑353/03 Nestlé  [2005] ECR I‑6135, paragraph 30).
26. The Court has already held that the condition of genuine use of a trade mark, within the meaning of Article 15(1) of Regulation No 207/2009, may be satisfied where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark (see, to that effect, Case C‑12/12 Colloseum Holding  [2012] ECR I‑0000, paragraphs 35 and 36).
27. Moreover, the Court has also held, in relation to Article 10(2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which provision corresponds, in essence, to the second subparagraph of Article 15(1)(a) of Regulation No 207/2009, that the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark (Case C‑553/11 Rintisch  [2012] ECR I‑0000, paragraph 30).
29. That interpretation is, in particular, supported by the objective pursued by the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 which, by avoiding imposing a requirement for strict conformity between the form used in trade and the form in which the trade mark was registered, is to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. That objective would be jeopardised if, in order to establish use of the registered trade mark, an additional condition had to be met, whereby the different form in which that mark is used should not itself have been registered as a trade mark (see, by analogy, Rintisch , paragraphs 21 and 22).
34. Concerning, in the first place, the assessment of the likelihood of confusion within the meaning of Article 9(1)(b) of Regulation No 207/2009, it should be recalled that, according to settled case-law, the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, inter alia, Case C‑251/95 SABEL  [1997] ECR I‑6191, paragraph 22; Case C‑120/04 Medion  [2005] ECR I‑8551, paragraph 27; and Case C‑334/05 P OHIM  v Shaker  [2007] ECR I‑4529, paragraph 34).
35. The Court has also held on several occasions that the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, inter alia, SABEL , paragraph 23; Medion , paragraph 28; and OHIM  v Shaker , paragraph 35).
36. Furthermore, according to the case-law of the Court, the more distinctive the trade mark, the greater the likelihood of confusion. Therefore, trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than trade marks with a less distinctive character (Case C‑39/97 Canon  [1998] ECR I‑5507, paragraph 18).
39. Concerning, in the second place, the examination of whether any unfair advantage has been taken of the distinctive character or reputation of the trade mark within the meaning of Article 9(1)(c) of Regulation No 207/2009, it is necessary to undertake a global assessment, taking into account all the factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of its distinctive character, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it (see Case C‑487/07 L’Oréal and Others  [2009] ECR I‑5185, paragraph 44).
40. In that regard, it is clear from the order for reference that the similarity between the trade marks of the Specsavers group and the signs used by Asda was created intentionally in order to create an association in the mind of the public between the two trade signs. The fact that Asda used a similar colour to that used by the Specsavers group with the intention of taking advantage of the distinctive character and reputation of the latter’s trade marks is a factor which must be taken into account in order to ascertain whether it can be held that unfair advantage is being taken of the distinctive character or reputation of the trade mark (see, by analogy, L’Oréal  and Others, paragraph 48).
45. Moreover, it is apparent from the case-law of the Court that those assessments must take account of the precise context in which the sign which is allegedly similar to the registered trade mark was used (see, to that effect, concerning Article 5(1) of Directive 89/104, Case C‑533/06 O2 Holdings and O2 (UK)  [2008] ECR I‑4231, paragraph 64).