Leidseplein Beheer BV and Hendrikus de Vries v Red Bull GmbH and Red Bull Nederland BV.
Date: 2014-02-06
28. That concept must therefore be interpreted in the light of the overall scheme and objectives of the system of which it forms part (see, to that effect, Case C‑292/00 Davidoff  [2003] ECR I‑389, paragraph 24), and, in particular, must take into account the context of the provision which contains it (see, to that effect, Case C‑320/12 Malaysia Dairy Industries  [2013] ECR, paragraph 25).
30. It is thus settled case-law that the exclusive right under that provision was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of that mark, that is, to ensure that the trade mark can fulfil its functions. Therefore, the exercise of that right must be reserved to cases in which another party’s use of the sign adversely affects or is liable adversely to affect one of the functions of the trade mark. Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services in question, but also its other functions, such as that of guaranteeing the quality of those goods or services or those of communication, investment or advertising (Case C‑661/11 Martin Y Paz Diffusion [2013] ECR, paragraph 58 and the case‑law cited).
33. Article 5(2) of Directive 89/104, however, establishes, for the benefit of trade marks with a reputation, a wider form of protection than that laid down in Article 5(1). The specific condition of that protection consists of a use without due cause of a sign identical with or similar to a registered mark which takes, or would take, unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark (Case C‑487/07 L’Oréal and Others  [2009] ECR I‑5185, paragraph 34 and the case‑law cited).
34. When a Member State transposes Article 5(2) of Directive 89/104, it must therefore grant protection which is at least as extensive for identical or similar goods or services as it is 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 (see Case C‑408/01 Adidas‑Salomon and Adidas Benelux  [2003] ECR I‑12537, paragraph 20).
41. Nevertheless, the purpose of Directive 89/104 is generally to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (Case C‑145/05 Levi Strauss  [2006] ECR I‑3703, paragraph 29).
42. It follows that the protection of rights which the proprietor of a trade mark derives from that directive is not unconditional, since in order to maintain the balance between those interests that protection is limited, in particular, to those cases in which that proprietor shows himself to be sufficiently vigilant by opposing the use, by other operators, of signs likely to infringe his mark ( Levi Strauss , paragraph 30).
43. In a system for the protection of marks such as that adopted, on the basis of Directive 89/104, by the Benelux Convention, however, the interests of a third party in using, in the course of trade, a sign similar to a mark with a reputation must be considered, in the context of Article 5(2) of that directive, in the light of the possibility for the user of that sign to claim ‘due cause’.
44. Where the proprietor of the mark with a reputation has demonstrated the existence of one of the forms of injury referred to in Article 5(2) of Directive 89/104 and, in particular, has shown that unfair advantage has been taken of the distinctive character or the repute of that mark, the onus is on the third party using a sign similar to the mark with a reputation to establish that he has due cause for using such a sign (see, by analogy, Case C‑252/07 Intel Corporation  [2008] ECR I‑8823, paragraph 39).
45. It follows that the concept of ‘due cause’ may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation.
46. Thus, the concept of ‘due cause’ is intended, not to resolve a conflict between a mark with a reputation and a similar sign which was being used before that trade mark was filed or to restrict the rights which the proprietor of that mark is recognised as having, but to strike a balance between the interests in question by taking account, in the specific context of Article 5(2) of Directive 89/104 and in the light of the enhanced protection enjoyed by that mark, of the interests of the third party using that sign. In so doing, the claim by a third party that there is due cause for using a sign which is similar to a mark with a reputation cannot lead to the recognition, for the benefit of that third party, of the rights connected with a registered mark, but rather obliges the proprietor of the mark with a reputation to tolerate the use of the similar sign.
52. The Court has held that, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or repute of that mark (see L’Oréal and Others , paragraph 49).