1 This request for a preliminary ruling concerns the interpretation of Article 1 and Article 5(4) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1) and of Articles 34 and 36 TFEU.
2 The request has been made in proceedings between Purefun Group AB and Doggy AB concerning an infringement.
3 Article 34 TFEU provides: ‘Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States.’
4 Under Article 36 TFEU: ‘The provisions of Articles 34 and 35 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of national treasures possessing artistic, historic or archaeological value; or the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.’
5 Recital 41 of Directive 2015/2436 reads as follows: ‘Member States are bound by the [Paris Convention for the Protection of Industrial Property, signed in Paris on 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, Vol. 828, No 11851, p. 305)] (“the Paris Convention”) and the [Agreement on Trade-Related Aspects of Intellectual Property Rights contained in Annex 1C to the Agreement establishing the World Trade Organization (WTO), which was approved by Council Decision 94/800/EC (of 22 December 1994) concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1; “the TRIPS Agreement”)]. It is necessary that this Directive be entirely consistent with that Convention and that Agreement. The obligations of the Member States resulting from that Convention and that Agreement should not be affected by this Directive. Where appropriate, the second paragraph of Article 351 [TFEU] should apply.’
6 Article 1 of that directive, entitled ‘Scope’, provides: ‘This Directive applies to every trade mark in respect of goods or services which is the subject of registration or of an application for registration in a Member State as an individual trade mark, a guarantee or certification mark or a collective mark, or which is the subject of a registration or an application for registration in the Benelux Office for Intellectual Property or of an international registration having effect in a Member State.’
7 Article 5 of that directive, entitled ‘Relative grounds for refusal or invalidity’, provides, in paragraph 4 thereof: ‘Any Member State may provide that a trade mark is not to be registered or, if registered, is liable to be declared invalid where, and to the extent that: (a) rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; (b) the use of the trade mark may be prohibited by virtue of an earlier right, other than the rights referred to in paragraph 2 and point (a) of this paragraph, and in particular: (i) a right to a name; (ii) a right of personal portrayal; (iii) a copyright; (iv) an industrial property right; (c) the trade mark is liable to be confused with an earlier trade mark protected abroad, provided that, at the date of the application, the applicant was acting in bad faith.’
8 Under Article 10 of that directive, entitled ‘Rights conferred by a trade mark’: ‘1. The registration of a trade mark shall confer on the proprietor exclusive rights therein. 2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trade mark, the proprietor of that registered trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a) the sign is identical with the trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered; (b) the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) the sign is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 3. The following, in particular, may be prohibited under paragraph 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or part of a trade or company name; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC [of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising (OJ 2006 L 376, p. 21)].’ …’
9 Article 16 of Directive 2015/2436, entitled ‘Use of trade marks’, provides, in paragraph 1 thereof: ‘If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during a continuous five-year period, the trade mark shall be subject to the limits and sanctions provided for in Article 17, Article 19(1), Article 44(1) and (2), and Article 46(3) and (4), unless there are proper reasons for non-use.’
10 The varumärkeslagen (2010:1877) (Law on Trade Marks (2010: 1877); ‘the Law on Trade Marks’) was amended in order to transpose Directive 2015/2436 into Swedish law. Paragraph 8 of Chapter 1 of the Law on Trade Marks provides that the proprietor of a company name or other commercial designation has exclusive rights in the sign used as a trade sign.
11 Paragraph 10 of Chapter 1 of the Law on Trade Marks provides that the exclusive right in a trade sign under Paragraph 8 of that chapter means that no person other than the proprietor may, without the latter’s consent, use any sign for goods and services in the course of trade if the sign is identical with or similar to the trade sign and is used in relation to goods or services of the same or similar kind, if there exists a likelihood of confusion, including the risk that use of the sign may lead to the impression that there is an association between the user of the sign and the proprietor of the trade sign.
12 Paragraph 3 of Chapter 8 of the Law on Trade Marks states that a court may, at the request of the proprietor of a trade sign, prohibit a person who commits a trade mark infringement from continuing to do so, under penalty of a fine.
13 Paragraph 1 of Chapter 1 of the lag (2018:1653) om företagsnamn (Law on Company Names (2018:1653); ‘the Law on Company Names’) defines a company name as the denomination under which an undertaking carries out its activities, the ‘trade name’ designating the general concept including the company name and secondary trade names.
14 Paragraph 2 of Chapter 1 of the Law on Company Names provides that an undertaking acquires exclusive rights in a company name through registration or by virtue of use. Paragraph 3 of Chapter 1 provides that the proprietor of a trade mark or other trade sign has an exclusive right over that sign where it is used as a trade name.
15 Paragraph 1 of Chapter 2 of the Law on Company Names provides that a company name may be registered only if it is capable of distinguishing the proprietor’s activity from that of other undertakings. That provision states that the length of time and the extent of use of the company name are to be taken into account when assessing whether a company name has distinctive character. Furthermore, that provision provides that if the company name consists solely of a general designation of the nature of the activity of the undertaking or of a product or of a service offered by that undertaking or if the company name consists solely of a commonly used place name or the like, the company name is not in itself to be considered as having distinctive character. Where the company name includes a designation such as ‘limited liability’, ‘general partnership’ or ‘cooperative company’, or an abbreviation of such a designation, that designation is not to be taken into account in the assessment.
16 Doggy, a company incorporated under Swedish law, produces, inter alia, dog food. Its object is the manufacturing and trading of foodstuffs and other animal products and related activities. It is the proprietor of the company name ‘Doggy AB’ and the word mark DOGGY, registered in Sweden for foodstuffs for animals in Class 31 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
17 Purefun Group AB (‘Purefun’) is a company incorporated under Swedish law whose activity includes the retail sale, inter alia, of dog food and dog treats. It sells its goods on its website under the domain name ‘doggie.se’ and uses the sign ‘DOGGIE’ in the course of its activities.
18 In November 2021, Doggy brought proceedings against Purefun seeking, first, an injunction prohibiting Purefun from using the sign ‘DOGGIE’ and, second, payment of 150000 kronor (SEK) (approximately EUR 13000) by way of damages. Doggy claimed that Purefun used that sign, as well as the trade mark and company name of which it is the proprietor, without its consent.
19 The first-instance court upheld Doggy’s claims on the ground that there was a likelihood of confusion between, on the one hand, Doggy’s trade mark and company name and, on the other hand, the sign ‘DOGGIE’ used by Purefun.
20 Purefun appealed against that decision to the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patent and Market Court of Appeal, Stockholm, Sweden), which is the referring court.
21 That court states that, in Sweden, first, the Law on Company Names provides that the company name of an undertaking confers on that undertaking an exclusive right over that name, provided that the sign which constitutes that name enables the activities of its proprietor to be distinguished from those of other undertakings. The extent of that right is comparable to that of the exclusive right conferred on its proprietor by a trade mark. Second, under the Law on Trade Marks, the proprietor of a trade mark or another trade sign which is used as a company name is also conferred an exclusive right over that name. Thus, the proprietor of a company name enjoys, under those national provisions, a ‘cross-protection’ which enables the proprietor to prohibit any third party from using, in the course of trade, in relation to goods or services, a sign that is identical or similar to that company name, and which is used for identical or similar types of goods or services, where there is a likelihood of confusion, in particular where use of the sign may lead to the impression that there is an association between its user and the proprietor of that company name.
22 The referring court is uncertain as to the compatibility of that protection under the provisions of the Law on Trade Marks and the Law on Company Names with Directive 2015/2436 and, more generally, with the principle of the free movement of goods. It considers, in essence, that, although that ‘cross-protection’ offers the proprietor of a company name protection similar to that of a trade mark, it is not, however, subject to conditions as strict as those applicable in that area. The referring court notes two differences in that regard.
23 First, whereas the absence of genuine use of a trade mark for the goods or services in respect of which it is registered may lead to the revocation of the exclusive right of its proprietor, Swedish law does not lay down any equivalent provision for a company name.
24 Second, in order to determine whether a sign is used in relation to goods or services identical with those for which a trade mark is registered, it is necessary to refer to the system of classification established by the Nice Agreement, whereas, as regards company names, the assessment of the likelihood of confusion is carried out by reference to the activities covered by the object of the undertaking, which can be defined broadly.
25 In the light of those differences, the referring court considers that it is possible that the protection granted to company names under Swedish law is more extensive than that provided for by Directive 2015/2436 in respect of trade marks, which could affect the free movement of goods and the freedom to provide services. It considers that such protection could create obstacles to the cross-border sale of goods or services.
26 In those circumstances, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patent and Market Court of Appeal, Stockholm) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling: ‘(1) In the light of the [FEU Treaty] and the fundamental principle of the free movement of goods and services under EU law, is it compatible with the provisions of [Directive 2015/2436], in particular Articles 1 and 5(4), to have a system under national law whereby an earlier right in a company name may constitute a basis for prohibiting the use of a subsequent trade sign in the entire field of activity in respect of which the company name is registered and without any requirement that the company name must have been used to distinguish goods or services? (2) If the answer to Question 1 is in the negative, is it compatible with [Directive 2015/2436] and EU law in general for a company name, which is used per se as a sign to distinguish certain kinds of goods or services in the field of activity in respect of which the company name is registered, to constitute grounds for prohibiting the use of a subsequent trade sign in connection with kinds of goods or services other than those in respect of which the company name is used as a sign?’
27 According to settled case-law, under the procedure laid down by Article 267 TFEU, which provides for cooperation between national courts and the Court of Justice, it is for the latter to provide the national court with an answer which will be of use to it and enable it to determine the case before it. To that end, the Court should, where necessary, reformulate the questions referred to it (judgments of 17 July 1997, Krüger, C‑334/95, EU:C:1997:378, paragraphs 22 and 23, and of 29 April 2025, Prezydent Miasta Mielca, C‑453/23, EU:C:2025:285, paragraph 38 and the case-law cited).
28 In the present case, it is apparent from the request for a preliminary ruling that the referring court is uncertain whether the conditions laid down by Swedish law for the protection of a company name, in so far as they are less strict than those applicable to trade marks, are compatible with Directive 2015/2436 and the principles of the free movement of goods and the freedom to provide services.
29 In that regard, it is apparent from the information provided by the referring court that, first, Purefun’s use of the sign which the proprietor of the registered company name, namely the undertaking Doggy, wishes to prohibit relates, inter alia, to the sale of dog food and dog treats and, second, the object of that undertaking includes the sale of foodstuffs and other animal products and related activities. It follows from that information that the use of the sign opposed by the proprietor of the registered company name does not concern types of goods or services other than those in respect of which that company name was registered.
30 Consequently, it must be held that, by its two questions, which it is appropriate to examine together, the referring court asks, in essence, whether Directive 2015/2436 and Articles 34 and 36 TFEU must be interpreted as precluding national rules under which the exclusive right conferred by a company name allows its proprietor to prohibit a third party from using an identical or similar sign, as a trade name or as a domain name, in respect of goods or services which are identical or similar to those falling within activities for which its company name is registered, even though those rules do not provide that failure to use that company name may lead to the revocation of that exclusive right or require, for the purposes of registering that company name, the goods or services which are part of the object of the proprietor to be specified.
31 In order to answer that question, it must be borne in mind that Directive 2015/2436 seeks to approximate national trade mark laws, but not those relating to trade names, a category to which a company name may belong. In the absence of harmonisation at EU level, the protection of trade names is a matter for national law.
32 However, the trade name, as an intellectual property right, is not alien to EU law. Thus, certain provisions of the Paris Convention, which was concluded by all the Member States, but not by the European Union itself, have been incorporated into the TRIPS Agreement, which was itself concluded by the European Union, so that those provisions produce, in EU law, the same effects as those produced by the TRIPS Agreement (see, to that effect, judgment of 27 February 2024, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2024:172, paragraphs 59 to 62).
33 Among the provisions thus incorporated into the TRIPS Agreement is Article 8 of that convention, which provides that ‘a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a [trade mark].’
34 Those elements are reflected in Directive 2015/2436, recital 41 of which emphasises that it is ‘necessary’ for it to be ‘entirely consistent’ with that convention and the TRIPS Agreement. Accordingly, among the rights conferred by a trade mark, Article 10(3)(d) of that directive allows the proprietor of a trade mark to use its exclusive right to prohibit ‘using the sign as a trade or company name or part of a trade or company name’. That provision is an expression of the principle of the primacy of the prior exclusive right, which is one of the basic principles of trade mark law and, more generally, of all industrial property law (see, to that effect, judgment of 2 June 2022, Classic Coach Company, C‑112/21, EU:C:2022:428, paragraph 40 and the case-law cited).
35 That principle also governs certain conflicts between an earlier trade name and a later mark. It is thus apparent from Article 5(4)(a) of Directive 2015/2436 that ‘any Member State may provide that a trade mark is not to be registered or, if registered, is liable to be declared invalid where, and to the extent that … rights to a non-registered trade mark or to another sign used in the course of trade were acquired … and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark’.
36 Here, in the case in the main proceedings, the conflict between the sign ‘Doggy’, used in an earlier company name, and the sign ‘DOGGIE’, used as a trade name or as a domain name, does not involve any trade mark. Where a question arises of resolving a conflict between two trade names, Directive 2015/2436, in so far as it seeks only to approximate national trade mark laws, is not relevant. The compatibility of national measures governing such conflicts must then be assessed in the light of primary law and not of that directive.
37 In that regard, the referring court has doubts as to the compatibility of the Swedish system for the protection of company names resulting from the combined provisions of the Law on Trade Marks and the Law on Company Names with the principles of the free movement of goods and the freedom to provide services.
38 According to the information provided by that court, that system applies to the company names of all Swedish undertakings, irrespective of the goods or services covered by their activities.
39 It is also apparent from the information provided by that court that the dispute in the main proceedings calls into question the right of the proprietor of a company name, whose activities consist of the production and the selling of certain foodstuffs and animal products, to prohibit another company from selling such goods under a trade name that is similar or identical to that company name. Since that dispute relates predominantly to the free movement of goods, and in the absence of information from the referring court on the free movement of services, there is no need to examine separately the compatibility of that system with Article 56 TFEU.
40 The free movement of goods between Member States is a fundamental principle of the FEU Treaty expressed in Article 34 TFEU, which prohibits Member States from adopting between themselves quantitative restrictions on imports and all measures having equivalent effect. According to settled case-law, that provision covers any national measure which is capable of hindering, directly or indirectly, actually or potentially, intra-EU trade (see, to that effect, judgments of 11 July 1974, Dassonville, 8/74, EU:C:1974:82, paragraph 5, and of 29 July 2024, BP France, C‑624/22, EU:C:2024:640, paragraph 61). However, national legislation or a national practice which constitutes a measure having equivalent effect to quantitative restrictions may be justified on one of the public interest grounds listed in Article 36 TFEU, which include the protection of industrial and commercial property.
41 In the absence of harmonisation of the laws of the Member States on trade names, the prohibition on an undertaking from using, for the marketing of certain products in one Member State, the same trade names as it uses in other Member States, may indeed constitute a restriction on the free movement of goods, contrary to Article 34 TFEU. Such a restriction is, however, justified by overriding reasons in the public interest relating to the protection of industrial and commercial property, namely the protection of trade names against the likelihood of confusion (see, to that effect, judgment of 11 May 1999, Pfeiffer, C‑255/97, EU:C:1999:240, paragraphs 26 to 29).
42 Such a restriction must also not go beyond what is necessary to attain that objective.
43 Without referring expressly to the principle of proportionality, the referring court considers, in essence, that, by offering the proprietor of an undertaking’s company name established in accordance with Swedish law a level of protection comparable to that of a trade mark, without requiring conditions equivalent to those laid down by Directive 2015/2436 concerning genuine use of the trade mark and to the description of the goods or services for which it is registered, the system at issue in the main proceedings operates to the detriment of proprietors of trade names from other Member States.
44 As has been pointed out in paragraph 31 of the present judgment, Directive 2015/2436 is not intended to approximate the laws on trade names. In the absence of such harmonisation and in view of the different functions of trade marks and trade names, Articles 34 and 36 TFEU cannot be interpreted as providing that the protection of trade names is subject to the same requirements as those applicable to trade marks.
45 It is apparent from the documents before the Court that, in the Law on Trade Marks, the absence of genuine use of a company name is not subject to limits or penalties identical to those laid down in Article 16 of Directive 2015/2436. It is also apparent from the observations submitted to the Court by the Swedish Government and by the European Commission that, under the Law on Company Names, failure to use a company name may, under certain conditions, lead to the revocation of the exclusive right which it confers, which it is for the referring court to ascertain.
46 As regards the risk referred to by the referring court that company names may enjoy protection against the likelihood of confusion which is broader than that applicable to trade marks by reason of being more lenient in defining activities falling within the object of an undertaking than in defining the classes of goods or services in respect of which a trade mark is registered in accordance with Directive 2015/2436, it must, in the first place, be pointed out that the object of an undertaking is not intended to describe precisely or exhaustively all the goods or services which may fall within the scope of that undertaking’s activities. By contrast, for a trade mark, that precision is required in order to assess any grounds for invalidity, whether absolute or relative, and to enforce the exclusive right conferred by that mark, which enables its proprietor to monopolise the sign registered as a trade mark for specific goods or services.
47 In the second place, it is apparent from the explanations provided by the referring court that although, under Swedish law, the exclusive right of the proprietor of a registered company name is valid in the fields of activity referred to in its object, that law requires that proprietor to describe and limit the nature of those activities with sufficient precision to enable third parties to be effectively informed of them.
48 In those circumstances, it must be held, subject to the checks to be carried out by the referring court, that it does not appear that the system at issue in the main proceedings, which confers an exclusive right on the proprietor of a company name, goes beyond what is necessary to attain the objective of general interest relating to the protection of industrial and commercial property.
49 In the light of all the foregoing considerations, the answer to the questions referred is that Directive 2015/2436 and Articles 34 and 36 TFEU must be interpreted as not precluding a national system which provides, first, that the exclusive right conferred by a company name allows its proprietor to prohibit a third party from using an identical or similar sign, as a trade name or as a domain name, for goods or services which are identical or similar to those falling within the scope of activities for which its company name is registered, and, second, that failure to use that company name may, under certain conditions, lead to the revocation of that exclusive right and that the proprietor is required to describe and limit the nature of the activities falling within its object with sufficient precision to enable third parties to be effectively informed of them.
50 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.