Summary
Parties
Grounds
Decision on costs
Operative part
Keywords
Approximation of laws - Trade marks - Directive 89/104 - Registration of a new trade mark - Existence of identical or similar goods bearing a similar trade mark - Likelihood of confusion with the earlier trade mark - Definition
(Council Directive 89/104, Art. 4(1)(b))
Summary
The criterion of 'likelihood of confusion which includes the likelihood of association with the earlier mark' contained in Article 4(1)(b) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision. The concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope.
The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 4(1)(b) of the Directive - '... there exists a likelihood of confusion on the part of the public ...' - shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
The more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. That is not the case where the earlier mark is not especially well known to the public and consists of an image with little imaginative content.
Parties
In Case C-251/95,
REFERENCE to the Court under Article 177 of the EC Treaty by the Bundesgerichtshof for a preliminary ruling in the proceedings pending before that court between
SABEL BV
and
Puma AG, Rudolf Dassler Sport
on the interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p.1),
THE COURT,
composed of: G.C. Rodríguez Iglesias, President, C. Gulmann (Rapporteur), H. Ragnemalm and M. Wathelet, (Presidents of Chambers), G.F. Mancini, J.C. Moitinho de Almeida, P.J.G. Kapteyn, J.L. Murray, D.A.O. Edward, J.-P. Puissochet, G. Hirsch, P. Jann and L. Sevón, Judges,
Advocate General: F.G. Jacobs,
Registrar: H.A. Rühl, Principal Administrator,
after considering the written observations submitted on behalf of:
- Puma AG, Rudolf Dassler Sport, by W. Hufnagel, Patentanwalt,
- the French Government, by C. de Salins, Deputy Director in the Legal Affairs Department of the Ministry of Foreign Affairs, and P. Martinet, Secretary for Foreign Affairs in that Ministry, acting as Agents,
- the Netherlands Government, by A. Bos, Legal Adviser in the Ministry of Foreign Affairs, acting as Agent,
- the United Kingdom Government, by L. Nicoll, of the Treasury Solicitor's Department, acting as Agent, assisted by M. Silverleaf, Barrister,
- the Commission of the European Communities, by J. Grunwald, Legal Adviser, and B.J. Drijber, of its Legal Service, acting as Agents,
having regard to the Report for the Hearing,
after considering the written observations submitted on behalf of:
- Puma AG, Rudolf Dassler Sport, by W. Hufnagel, Patentanwalt,
- the French Government, by C. de Salins, Deputy Director in the Legal Affairs Department of the Ministry of Foreign Affairs, and P. Martinet, Secretary for Foreign Affairs in that Ministry, acting as Agents,
- the Netherlands Government, by A. Bos, Legal Adviser in the Ministry of Foreign Affairs, acting as Agent,
- the United Kingdom Government, by L. Nicoll, of the Treasury Solicitor's Department, acting as Agent, assisted by M. Silverleaf, Barrister,
- the Commission of the European Communities, by J. Grunwald, Legal Adviser, and B.J. Drijber, of its Legal Service, acting as Agents,
having regard to the Report for the Hearing,
after hearing the oral observations of SABEL BV, represented by R.E.P. de Ranitz, of The Hague Bar; of the Belgian Government, represented by A. Braun, of the Brussels Bar; of the French Government, represented by P. Martinet; of the Luxembourg Government, represented by N. Decker, of the Luxembourg Bar; of the United Kingdom Government, represented by L. Nicoll, assisted by M. Silverleaf; and of the Commission, represented by J. Grunwald, at the hearing on 28 January 1997,
after hearing the Opinion of the Advocate General at the sitting on 29 April 1997,
gives the following
Judgment
Grounds
1 By order of 29 June 1995, received at the Court on 20 July 1995, the Bundesgerichtshof (Federal Court of Justice) referred to the Court for a preliminary ruling under Article 177 of the EC Treaty a question on the interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1, hereinafter 'the Directive').
2 That question was raised in proceedings between the Dutch company SABEL BV (hereinafter 'SABEL') and the German company Puma AG, Rudolf Dassler Sport (hereinafter 'Puma') concerning an application to register the IR mark 540 894, depicted below,
>REFERENCE TO A GRAPHIC>
in Germany, inter alia for goods in classes 18 'Leather and imitation leather, products made therefrom not included in other classes; bags and handbags' and 25 'Clothing, including tights, hosiery, belts, scarves, ties/cravats and braces; footwear; hats'.
3 Puma lodged opposition to the registration of that mark on the ground, in particular, that it was the proprietor of the pictorial mark depicted below,
>REFERENCE TO A GRAPHIC>
which was of earlier priority and registered in Germany (under No 1 106 066), inter alia for 'leather and imitation leather, goods made therefrom (bags) and articles of clothing'.
4 The Deutsches Patentamt (German Patent Office) considered there to be no resemblance for the purposes of trade-mark law between the two marks and rejected the opposition. Puma therefore appealed to the Bundespatentgericht (Federal Patents Court) which partially upheld its application and held that there was a resemblance between the two marks with respect to SABEL's goods in classes 18 and 25, which it regarded as being identical or similar to the goods on the list of articles covered by the Puma mark. SABEL then appealed to the Bundesgerichtshof for annulment of the decision refusing its application.
5 The Bundesgerichtshof provisionally considered that, applying the principles applied hitherto under German law for determining whether there is a likelihood of confusion for trade-mark purposes, no such likelihood existed as regards the two marks in question.
6 The criteria applied by the Bundesgerichtshof in order to reach that provisional conclusion are, in essence, as follows:
- In determining whether there is a likelihood of confusion, the court must focus on the overall impression made by the respective signs. It is not permissible to isolate one element out of a graphic ensemble and to restrict examination of the likelihood of confusion to that element alone. However, an individual component may be recognized as having a particularly distinctive character which characterizes the sign as a whole, and, consequently, a likelihood of confusion may be found to exist if another party's sign resembles the whole of the sign so characterized. Even in such a case, however, the two signs must be compared in their entirety and the comparison must not be confined to their individual (characterizing) elements.
- A sign may have a particularly distinctive character either per se or because of the reputation the mark enjoys with the public. The more distinctive its character, the greater the risk of confusion. However, since no submission had been made on that point in the present case, the starting point for examining the similarity of the two marks is that the earlier mark has normal distinguishing characteristics.
- The assessment of whether an element has such significance as to characterize the sign as a whole is, essentially, a matter for the court called upon to adjudicate on the substance of the case, subject however to its observing the rules of logic and common sense. The Bundespatentgericht cannot be criticized in law for stressing the importance of the pictorial component
