Céline SARL v Céline SA.
Date: 2007-09-11
15. 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 the directive, in particular the term ‘use’ which appears there (Case C-206/01 Arsenal Football Club  [2002] ECR I-10273, paragraph 45, and Case C-48/05 Adam Opel [2007] ECR I-0000, paragraph 17).
16. As is clear from the Court’s case-law ( Arsenal Football Club ; Case C-245/02 Anheuser-Busch  [2004] ECR I‑10989; and Adam Opel ), the proprietor of a registered mark may prevent the use of a sign by a third party which is identical to his mark under Article 5(1)(a) of the directive 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 to those for which the mark is registered, and
– it must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.
17. It is a matter of agreement in the main proceedings that the sign which is identical to the mark at issue is used in the course of a commercial activity with a view to gain and not as a private matter. The mark is therefore being used in the course of trade (see, by analogy, Arsenal Football Club , paragraph 40, and Adam Opel , paragraph 18).
20. It is clear from the scheme of Article 5 of the directive that the use of a sign in relation to goods or services within the meaning of Article 5(1) and (2) is use for the purpose of distinguishing the goods or services in question, whereas Article 5(5) is directed at ‘the use which is made of a sign for purposes other than distinguishing the goods or services’ (Case C-63/97 BMW [1999] ECR I-905, paragraph 38).
21. The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services (see, to that effect, Case C-23/01 Robelco  [2002] ECR I‑10913, paragraph 34, and Anheuser‑Busch , paragraph 64). The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. a ccordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive.
22. Conversely, there is use ‘in relation to goods’ within the meaning of Article 5(1) of the directive where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets (see, to that effect, Arsenal Football Club , paragraph 41, and Adam Opel , paragraph 20).
23. In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party.
27. That is the situation where the sign is used by the third party in relation to his goods or services in such a way that consumers are liable to interpret it as designating the origin of the goods or services in question. In such a case, the use of the sign is liable to imperil the essential function of the mark, since, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EC Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see, to that effect, Arsenal Football Club , paragraph 48 and the case-law cited, and paragraphs 56 to 59).
29. According to established case-law, it is for the Court to provide the national court with all those elements for the interpretation of Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court has specifically referred to them in its questions ( Adam Opel , paragraph 31 and the case-law cited).
31. The Court has held that that provision is not limited to the names of natural persons ( Anheuser-Busch , paragraphs 77 to 80).
33. The Court has held that the condition stated in Article 6(1) of the directive that use be ‘in accordance with honest practices in industrial or commercial matters’ is, in essence, an expression of the duty to act fairly in relation to the legitimate interests of the trade-mark proprietor ( Anheuser-Busch , paragraph 82).
34. In that regard, it must be noted that, in assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the use of the third party’s name is understood by the relevant public, or at least a significant section of that public, as indicating a link between the third party’s goods or services and the trade-mark proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party ought to have been aware of that. Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which the third party might profit in marketing his goods or services ( Anheuser-Busch , paragraph 83).
35. It is for the national court to carry out an overall assessment of all the relevant circumstances in order to assess, more specifically, whether Céline SARL can be regarded as unfairly competing with Céline SA (see, to that effect, Anheuser-Busch , paragraph 84).