Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd.
Date: 2003-01-09
17. The Court points out  in limine  that the question will be examined below solely in the light of Article 5(2) of the Directive, but that the interpretation reached at the end of that examination will apply  mutatis mutandis  to Article 4(4)(a) of the Directive.
18. It should be recalled that, unlike Article 5(1) of the Directive, Article 5(2) does not require Member States to provide in their national law for the protection to which it refers. It merely permits them to provide such protection. When that power has been used, marks with a reputation thus benefit from the protection under both Article 5(1) of the Directive and Article 5(2).
19. Article 5(2) of the Directive allows stronger protection to be given to marks with a reputation than that conferred under Article 5(1).
24. The Court observes that Article 5(2) of the Directive must not be interpreted solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is a part.
25. Having regard to the latter aspects, that article cannot be given an interpretation which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services.
26. On this point, it has not been seriously disputed before the Court that, where a sign is used for identical or similar goods or services, a mark with a reputation must enjoy protection which is at least as extensive as where a sign is used for non-similar goods and services.
27. The question debated before the Court was essentially whether protection of a mark with a reputation against the use of a sign for identical or similar goods or services which is detrimental to the distinctive character or repute of the mark cannot already be obtained under Article 5(1) of the Directive, so that it is not necessary to seek it under Article 5(2).
28. Although, in the light of the 10th recital of the Directive, the protection conferred under Article 5(1)(a) is an absolute right when the use affects or is liable to affect one of the functions of the mark (see Case C-206/01  Arsenal Football Club  [2002] ECR I-10273, paragraphs 50 and 51), the application of Article 5(1)(b) depends on there being a likelihood of confusion (see Case C-425/98  Marca Mode  [2000] ECR I-4861, paragraph 34). The Court points out that in  SABEL , cited above (paragraphs 20 and 21), it has already excluded a broad interpretation of Article 4(1)(b) of the Directive, which is, in substance, identical to Article 5(1)(b), an interpretation which had been suggested to it on the ground,  inter alia , that Article 5(2) of the Directive, on its wording, applies only where a sign is used for non-similar goods or services.
29. Accordingly, where there is no likelihood of confusion, Article 5(1)(b) of the Directive could not be relied on by the proprietor of a mark with a reputation to protect himself against impairment of the distinctive character or repute of the mark.
30. In those circumstances, the answer to the first question must be that Articles 4(4)(a) and 5(2) of the Directive are to be interpreted as entitling the Member States to provide specific protection for registered trade marks with a reputation in cases where a later mark or sign, which is identical with or similar to the registered mark, is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark.
The second question