O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited.
Date: 2008-06-12
34. First, Article 5(1) and (2) of Directive 89/104 must be interpreted as covering the use of a sign identical with, or similar to, the trade mark in respect of goods marketed or services supplied by the third party (see, to that effect, as regards Article 5(1)(a) of Directive 89/104, Case C‑48/05 Adam Opel  [2007] ECR I‑1017, paragraph 28).
35. Second, an advertisement in which the advertiser compares the goods and services which he markets with those of a competitor is aimed, evidently, at promoting the goods and services of that advertiser. With such an advertisement the advertiser seeks to distinguish his goods and services by comparing their characteristics with those of competing goods and services. That analysis is confirmed by recital 15 in the preamble to Directive 97/55, in which the Community legislature pointed out that the aim of comparative advertising is to distinguish between the goods and services of the advertiser and those of his competitor (see Case C‑112/99 Toshiba Europe  [2001] ECR I‑7945, paragraph 53).
42. According to settled case‑law, that is a broad definition covering all forms of comparative advertising, so that, in order for there to be comparative advertising, it is sufficient for there to be a statement referring even by implication to a competitor or to the goods or services which he offers (see Toshiba Europe , paragraphs 30 and 31; Case C‑44/01 Pippig Augenoptik  [2003] ECR I‑3095, paragraph 35; and Case C‑381/05 De Landtsheer Emmanuel  [2007] ECR I‑3115, paragraph 16).
43. The test for determining whether an advertisement is comparative in nature is thus whether it identifies, explicitly or by implication, a competitor of the advertiser or goods or services which the competitor offers ( Toshiba Europe , paragraph 29, and De Landtsheer Emmanuel , paragraph 17).
47. First, in the case of similarity between the mark and the sign and between the goods or services, the likelihood of confusion constitutes the specific condition for protection. Article 5(1)(b) of Directive 89/104 is thus designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, there exists a likelihood of confusion on the part of the public (Case C‑120/04 Medion  [2005] ECR I‑8551, paragraphs 24 and 25).
56. According to settled case‑law, in order to prevent the protection which is afforded to the proprietor varying from one Member State to another, the Court must give a uniform interpretation to Article 5(1) of Directive 89/104, in particular the term ‘use’ which appears there (Case C‑206/01 Arsenal Football Club  [2002] ECR I‑10273, paragraph 45; Adam Opel , paragraph 17; and Case C‑17/06 Céline  [2007] ECR I‑7041, paragraph 15).
57. As is apparent from the Court’s case‑law ( Arsenal Football Club ; C‑245/02 Anheuser‑Busch  [2004] ECR I‑10989; Medion ; Adam Opel ; and Céline ), the proprietor of a registered mark may prevent the use of a sign by a third party which is identical with, or similar to, his mark under Article 5(1)(b) of Directive 89/104 only if the following four conditions are satisfied:
– that use must be in the course of trade;
– it must be without the consent of the proprietor of the mark;
– it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered, and
– it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public.
59. Second, it is settled case‑law that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that provision (see, inter alia, Case C‑342/97 Lloyd Schuhfabrik Meyer  [1999] ECR I‑3819, paragraph 17, and Medion , paragraph 26). Thus, use of a sign which is identical with, or similar to, the trade mark which gives rise to a likelihood of confusion on the part of the public affects or is liable to affect the essential function of the mark.
64. In that regard, contrary to the submission of O2 and O2 (UK), the referring court was right to limit its analysis to the context in which the sign similar to the bubbles trade marks was used by H3G, for the purpose of assessing the existence of a likelihood of confusion.