Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd.
Date: 2003-10-23
16.  Adidas and the Commission contend that, on that point, an affirmative answer must be given. The Commission takes the view that such an answer is necessarily inferred from paragraph 25 of   Davidoff  .
18.  In that regard, it should be noted that where a Member State exercises the option provided by Article 5(2) of the Directive, it must grant to the proprietors of marks with a reputation a form of protection in accordance with that provision.
19.  In   Davidoff   (paragraphs 24 and 25), the Court observed in support of its interpretation that, in the light of the overall scheme and objectives of the system of which Article 5(2) of the Directive is part, 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. It went on to hold, in other words, that where the 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 or services (Davidoff  , paragraph 26).
20.  In the light of those findings, the Member State, if it transposes Article 5(2) of the Directive, must therefore grant protection which is at least as extensive for identical or similar goods or services as for non-similar goods or services. The Member State's option thus relates to the principle itself of granting greater protection to marks with a reputation, but not to the situations covered by that protection when the Member State grants it.
21.  It has been consistently held that, in applying national law, in particular national legislative provisions which were specially introduced in order to transpose a directive, the national court is required to interpret its national law, so far as possible, in the light of the wording and the purpose of the directive (see, in particular, Case 14/83   Von Colson and Kamann   [1984] ECR 1891, paragraph 26; Case 79/83   Harz   [1984] ECR 1921, paragraph 26, and Case C-185/97   Coote   [1998] ECR I-5199, paragraph 18).
22.  The answer to Question 1(a) must therefore be that a Member State, where it exercises the option provided by Article 5(2) of the Directive, is bound to grant the specific protection in question in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.
Question 1(b)
27.  In that regard, it must be noted at the outset that, unlike Article 5(1)(b) of the Directive, which is designed to apply only if there exists a likelihood of confusion on the part of the public, 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 such a likelihood. 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 Case C-425/98   Marca Mode   [2000] ECR I-4861, paragraphs 34 and 36).
28.  The condition of similarity between the mark and the sign, referred to in Article 5(2) of the Directive, requires the existence, in particular, of elements of visual, aural or conceptual similarity (see, in respect of Article 5(1)(b) of the Directive, Case C-251/95   SABEL   [1997] ECR I-6191, paragraph 23 in fine, and Case C-342/97   Lloyd Schuhfabrik Meyer   [1999] ECR I-3819, paragraphs 25 and 27 in fine).
29.  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 (see, to that effect, Case C-375/97   General Motors   [1999] ECR I-5421, paragraph 23).
30.  The existence of such a link must, just like a likelihood of confusion in the context of Article 5(1)(b) of the Directive, be appreciated globally, taking into account all factors relevant to the circumstances of the case (see, in respect of the likelihood of confusion,   SABEL  , paragraph 22, and   Marca Mode  , paragraph 40).
31.  The answer to Question 2(a) must therefore be that the protection conferred by Article 5(2) of the Directive is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign 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.
Question 2(b)