Siemens AG v VIPA Gesellschaft für Visualisierung und Prozeßautomatisierung mbH.
Date: 2006-02-23
14. It is settled case-law that it is necessary, when assessing whether the condition laid down in Article 3a(1)(g) of Directive 84/450 has been observed, to have regard to recital 15 in the preamble to Directive 97/55, which states that the use of a trade mark or distinguishing mark does not breach the right to the mark where it complies with the conditions laid down by Directive 84/450, the aim being solely to distinguish between the products and services of the advertiser and those of his competitor and thus to highlight differences objectively (see Case C-112/99 Toshiba Europe  [2001] ECR I-7945, paragraph 53).
15. An advertiser cannot be regarded as taking unfair advantage of the reputation of the distinguishing marks of his competitor if effective competition on the relevant market is conditional upon a reference to those marks (see Toshiba Europe , cited above, paragraph 54).
16. Further, the Court has already held that a third party’s use of a mark may take unfair advantage of the distinctive character or the reputation of the mark or be detrimental to them, for example by giving the public a false impression of the relationship between the advertiser and the trade mark owner (see Toshiba Europe , cited above, paragraph 55).
17. It is apparent from the order for reference that, by adopting the core element of the Siemens order number system, VIPA is informing the public that the two products in question have equivalent technical features. There is, therefore, a comparison of the material, relevant, verifiable and representative features of the goods within the meaning of Article 3a(1)(c) of Directive 84/450 (see Toshiba Europe,  cited above, paragraph 56).
19. Firstly, it should be noted that the products at issue in the main proceedings are intended for a specialist public, which is much less likely than final consumers to associate the reputation of Siemens products with that of products distributed by VIPA (see, to that effect, Toshiba Europe,  cited above, paragraph 52).
20. Next, the fact that VIPA uses its own acronym in the first part of its order numbers, and states in its catalogue that those numbers correspond to those of the Siemens programme modules, makes it possible for a distinction to be made between VIPA’s and Siemens’ respective identities and does not give a false impression either as to the origin of VIPA products or of there being any association between those two companies (see, to that effect, Toshiba Europe , cited above, paragraph 59).
22. With regard to the benefit to the advertiser and the consumer procured by the adoption of a distinguishing mark in identical form to be taken into consideration, the Court has already held that comparative advertising is designed to enable consumers to make the best possible use of the internal market, given that advertising is a very important means of creating genuine outlets for all goods and services throughout the Community (see Case C-44/01 Pippig Augenoptik [2003] ECR I-3095, paragraph 64).
23. Further, it is clear from the second recital in the preamble to Directive 97/55 that the purpose of comparative advertising is also to stimulate competition between suppliers of goods and services to the consumer’s advantage.
24. It follows that the benefit of comparative advertising to consumers must necessarily be taken into account in determining whether an advertiser is taking unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor.