C-408/01
Issues:
Trade marks with a reputation.
Protection against use of a sign in relation to identical or similar goods or services.
Degree of similarity between the mark and the sign.
Effect on the public.
Sign viewed as an embellishment.
Trade marks concerned:
A mark formed by a motif consisting of three very striking vertical stripes of equal width, running parallel, which appear on the side and down the whole length of the article of clothing. The motif may be executed in different sizes and different colour combinations, provided that it always contrasts with the basic colour of the article of clothing.
Findings:
1. A Member State, where it exercises the option provided by Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, 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.
2. The protection conferred by Article 5(2) of Directive 89/104 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.
3. The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of Directive 89/104 where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark, with the result that one of the conditions of the protection conferred by Article 5(2) of Directive 89/104 is then not satisfied.
Judgment text:
C-408/01, Adidas-Salomon AG and Adidas Benelux BV v. Fitnessworld Trading Ltd.
Published:
OJ C 304, 13.12.2003, p. 5