adidas AG andt adidas Benelux BV v Marca Mode CV and Others.
Date: 2008-04-10
23. As the Court has previously held, that requirement of availability is the reason underlying certain grounds for refusal of registration set out in Article 3 of the Directive (see to that effect, in particular, Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 25; Joined Cases C-53/01 to 55/01 Linde and Others [2003] ECR I‑3161, paragraph 73; and Case C‑104/01 Libertel [2003] ECR I‑3793, paragraph 53).
24. Further, Article 12(2)(a) of the Directive provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. By that provision, the Community legislature balanced the interests of the trade mark proprietor against those of his competitors in the availability of signs (see Case C-145/05 Levi Strauss [2006] ECR I-3703, paragraph 19).
28. The likelihood of confusion is the specific condition of the protection conferred by the trade mark, in particular against use by third parties of non-identical signs. The Court has defined that condition as 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 (see Case C-342/97 Lloyd Schuhfabrik Meyer  [1999] ECR I-3819, paragraph 17, and Case C-120/04 Medion  [2005] ECR I-8551, paragraphs 24 and 26).
29. According to the 10th recital in the preamble to the Directive, the appreciation of such likelihood ‘depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified’. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22; Case C-425/98 Marca Mode  [2000] ECR I‑4861, paragraph 40; and Medion , paragraph 27).
37. It is not disputed by the parties in the main proceedings that the three-stripe logo registered by adidas is a trade mark with a reputation. Moreover, it is common ground that the legislation applicable in the Netherlands includes the rule referred to in Article 5(2) of the Directive. Moreover, the Court has stated that Article 5(2) of the Directive also applies in respect of goods and services identical with or similar to those covered by the registered mark (see, to that effect, Case C‑292/00 Davidoff  [2003] ECR I‑389, paragraph 30, and Case C‑408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraphs 18 to 22).
38. The three-stripe logo registered by adidas thus benefits from both the protection conferred by Article 5(1) of the Directive and the extended protection granted by Article 5(2) of the Directive (see, by analogy, Davidoff , paragraphs 18 and 19).
40. Article 5(2) of the Directive establishes, for the benefit of trade marks with a reputation, a form of protection whose implementation does not require the existence of a likelihood of confusion. Article 5(2) applies to situations in which the specific condition of the protection consists of a use of the sign in question without due cause which takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (see Marca Mode , paragraph 36, and Adidas-Salomon and Adidas Benelux , paragraph 27).
41. The infringements referred to in Article 5(2) of the Directive, where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them. It is not therefore necessary that the degree of similarity between the mark with a reputation and the sign used by the third party is such that there exists a likelihood of confusion between them on the part of the 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 a link between the sign and the mark (see Adidas-Salomon and Adidas Benelux , paragraphs 29 and 31).
42. The existence of such a link must be appreciated globally, taking into account all the relevant factors relevant to the circumstances of the case ( Adidas-Salomon and Adidas Benelux , paragraph 30).
45. By thus limiting the effects of the exclusive rights of a trade mark proprietor, Article 6 of the Directive seeks to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the EC Treaty seeks to establish and maintain (see Case C-228/03 Gillette Company and Gillette Group Finland  [2005] ECR I-2337, paragraph 29, and the case-law cited).
46. Specifically, Article 6(1)(b) of the Directive seeks to ensure that all economic operators have the opportunity to use descriptive indications. As noted by the Advocate General in points 75 and 78 of his Opinion, that provision therefore gives expression to the requirement of availability.
47. However, the requirement of availability cannot in any circumstances constitute an independent restriction of the effects of the trade mark in addition to those expressly provided for in Article 6(1)(b) of the Directive. It must be stated in that regard that, in order for a third party to be able to plead the limitations of the effects of the trade mark in Article 6(1)(b) of the Directive and rely in that respect on the requirement of availability underlying that provision, the indication used by it must, as required by that provision of the Directive, relate to one of the characteristics of the goods marketed or the service provided by that third party (see, to that effect, Windsurfing Chiemsee , paragraph 28, and Case C-48/05 Adam Opel  [2007] ECR I-1017, paragraphs 42 to 44).