Marca Mode CV v Adidas AG and Adidas Benelux BV.
Date: 2000-06-22
21 According to settled case-law, as regards the division of jurisdiction between national courts and the Court of Justice under Article 177 of the Treaty the national court, which alone has direct knowledge of the facts of the case and of the arguments put forward by the parties, and which will have to give judgment in the case, is in the best position to determine, with full knowledge of the matter before it, the relevance of the questions of law raised by the dispute before it and the necessity for a preliminary ruling so as to enable it to give judgment. However, where the questions are inappropriately framed, the Court is free to extract from all the factors provided by the national court and in particular from the statement of grounds contained in the reference, the elements of Community law requiring an interpretation having regard to the subject-matter of the dispute (see, in particular, Case 83/78 Pigs Marketing Board v Redmond [1978] ECR 2347, paragraphs 25 and 26).
27 Article 4(1)(b) of the Directive has been the subject of interpretation by the Court, notably in SABEL.
34 Article 5(1)(b) of the Directive is designed to apply only if, because 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, which includes the likelihood of association between the sign and the trade mark. It follows from that wording that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope. The very terms of the provision exclude its application where there is no likelihood of confusion on the part of the public (see, as regards Article 4(1)(b) of the Directive, SABEL, paragraph 18). Protection of a registered mark thus depends, in accordance with Article 5(1)(b) of the Directive, on there being a likelihood of confusion (see, as regards Article 4(1)(b) of the Directive, Case C-39/97 Canon Kabushiki Kaisha v MGM [1998] ECR I-5507, paragraph 18).
35 The tenth recital in the preamble to the Directive, according to which the likelihood of confusion ... constitutes the specific condition for such protection, also confirms that interpretation (SABEL, paragraph 19).
36 The interpretation is not inconsistent with Article 5(2) of the Directive which establishes, for the benefit of well-known trade marks, a form of protection whose implementation does not require the existence of a likelihood of confusion. That provision 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.
37 Adidas cannot effectively rely on paragraph 24 of SABEL.
38 In that paragraph, the Court noted that the more distinctive the earlier mark, the greater will be the likelihood of confusion, adding that it is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.
39 The Court thus stated that the particularly distinctive character of the earlier mark may increase the likelihood of confusion and that, where there is a conceptual similarity between the mark and the sign, that character may contribute to the creation of such a likelihood. The negative formulation it is therefore not impossible which is used in paragraph 24 of SABEL simply underlines the possibility that a likelihood may arise from the conjunction of the two factors analysed. It in no way implies a presumption of likelihood of confusion resulting from the existence of a likelihood of association in the strict sense. By such wording, the Court referred by implication to the assessment of evidence which the national court must undertake in each case pending before it. It did not excuse the national court from the necessary positive finding of the existence of a likelihood of confusion which constitutes the matter to be proved.
40 In this connection, it must be noted that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (SABEL, paragraph 22). A global assessment implies some interdependence between the relevant factors (Canon, paragraph 17). For example, a likelihood of confusion may be found, despite a lesser degree of similarity between the goods or services covered, where the marks are very similar and the earlier mark, in particular its reputation, is highly distinctive (Canon, paragraph 19).
41 The reputation of a mark, where it is demonstrated, is thus an element which, amongst others, may have a certain importance. To this end, it may be observed that marks with a highly distinctive character, in particular because of their reputation, enjoy broader protection than marks with a less distinctive character (Canon, paragraph 18). Nevertheless, the reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion simply because of the existence of a likelihood of association in the strict sense.