The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect to allow a proprietor of a mark to prevent third parties from using the sign for dissimilar goods.
Held: The discretion given included the power to prevent uses of a mark for similar as well as dissimilar goods where a proprietor had an established reputation in the mark in that class of goods.
‘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, SABEL BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) [1997] ECR I-6191, 6224 et seq, para 23 in fine, and Lloyd Schuhfabrik Meyer and Co GmbH v Klijsen Handel BV (Case C-342/97) [1999] ECR I-3819, 3841 et seq, paras 25 and 27 in fine.
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, General Motors Corpn v Yplon SA (Case C-375/97) [1999] ECR I-5421, 5445- 5446, para 23.
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, para 22, and Marca Mode, para 40.
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.’
Citations:
Times 31-Oct-2003, [2004] Ch 120, C-408/01, [2004] FSR 401, [2003] EUECJ C-408/01
Links:
Statutes:
Jurisdiction:
European
Citing:
Cited – Davidoff et Cle SA and Another v Gofkid Ltd ECJ 9-Jan-2003
The claimant distributed cosmetics and other goods in Germany under the mark ‘Davidoff’, and the defendants used a similar registered mark for their own and similar goods. They sought protection under the directive.
Held: The directive . .
Cited by:
Cited – Mastercard International Incorporated v Hitachi Credit (Uk) Plc ChD 8-Jul-2004
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 08 June 2022; Ref: scu.190072
