Case C-120/04

Medion AG

v

Thomson multimedia Sales Germany & Austria GmbH

(Reference for a preliminary ruling from the Oberlandesgericht Düsseldorf)

(Trade marks – Directive 89/104/EEC – Article 5(1)(b) – Likelihood of confusion – Use of the trade mark by a third party – Composite sign including the name of another party followed by the trade mark)

Opinion of Advocate General Jacobs delivered on 9 June 2005 

Judgment of the Court (Second Chamber), 6 October 2005 

Summary of the Judgment

Approximation of laws — Trade marks — Directive 89/104 — Right of the proprietor of a registered trade mark to contest its unlawful use — Sign used for identical or similar goods — Likelihood of confusion –– Criteria for assessment –– Juxtaposing the company name of another party and a registered mark

(Council Directive 89/104, Art. 5(1)(b))

Article 5(1)(b) of First Directive 89/104 relating to trade marks is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.

(see para. 37, operative part)

JUDGMENT OF THE COURT (Second Chamber)

6 October 2005 (*)

(Trade marks – Directive 89/104/EEC – Article 5(1)(b) – Likelihood of confusion – Use of the trade mark by a third party – Composite sign including the name of another party followed by the trade mark)

In Case C-120/04,

REFERENCE for a preliminary ruling under Article 234 EC from the Oberlandesgericht Düsseldorf (Germany), made by decision of 17 February 2004, received at the Court on 5 March 2004, in the proceedings

Medion AG

v

Thomson multimedia Sales Germany & Austria GmbH,

THE COURT (Second Chamber),

composed of C.W.A. Timmermans, President of the Chamber, C. Gulmann (Rapporteur), R. Schintgen, G. Arestis and J. Klučka, Judges,

Advocate General: F.G. Jacobs,

Registrar: K. Sztranc, Administrator,

having regard to the written procedure and further to the hearing on 14 April 2005,

after considering the observations submitted on behalf of:

–       Medion AG, by P.-M. Weisse, Rechtsanwalt, and T. Becker, Patentanwalt,

–       Thomson multimedia Sales Germany & Austria GmbH, by W. Kellenter, Rechtsanwalt,

–       the Commission of the European Communities, by T. Jürgensen and N.B. Rasmussen, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 9 June 2005,

gives the following

Judgment

1       The reference for a preliminary ruling concerns the interpretation of Article 5(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 directive’).

2       This reference has been made in the course of proceedings between Medion AG (‘Medion’) and Thomson multimedia Sales Germany & Austria GmbH (‘Thomson’) regarding the use by Thomson in the composite sign ‘THOMSON LIFE’ of the registered trade mark LIFE, which belongs to Medion.

 Law

3       In relation to the protection afforded by the trade mark, the 10th recital in the preamble to the directive states:

‘... the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services; ... the protection applies also in case of similarity between the mark and the sign and the goods or services; ... it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; ... the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection ...’

4       Article 5(1)(b) of the directive provides as follows:

‘The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

...

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.’

5       This provision was transposed into German law by Paragraph 14(2)(2) of the Trade Mark Law (Markengesetz) of 25 October 1994 (BGBl. 1994 I, p. 3082).

 The main proceedings and the question referred for a preliminary ruling

6       Medion is the owner in Germany of the trade mark LIFE, registered on 29 August 1998, for leisure electronic devices. It has a multimillion euro turnover per annum in the manufacture and marketing of these products.

7       Thomson belongs to one of the world’s leading companies in the leisure electronic devices sector. It markets some of its products under the name ‘THOMSON LIFE’.

8       In July 2002, Medion brought an action before the Landgericht (Regional Court) Düsseldorf for trade mark infringement. It requested that Thomson be prevented from using the sign ‘THOMSON LIFE’ to designate certain leisure electronic devices.

9       The Landgericht Düsseldorf rejected the application on the ground that there was no likelihood of confusion with the mark LIFE.

10     Medion appealed to the Oberlandesgericht (Higher Regional Court) Düsseldorf, seeking to have Thomson prevented from using the sign ‘THOMSON LIFE’ for television sets, cassette players, CD players and hi-fi systems.

11     That court, the referring court, states that the outcome of the litigation depends on whether there is a likelihood of confusion, within the meaning of Article 5(1)(b) of the directive, between the trade mark LIFE and the composite sign ‘THOMSON LIFE’.

12     It maintains that, according to the current case-law of the Bundesgerichtshof (Federal Court of Justice), which is based on the theory known as the ‘Prägetheorie’ (theory of the impression conveyed), in order to appreciate the similarity of the sign at issue, it is necessary to consider the overall impression conveyed by each of the two signs and to ascertain whether the common component characterises the composite mark to the extent that the other components are largely secondary to the overall impression. There will be no likelihood of confusion if the common component merely contributes to the overall impression of the sign. It will not matter whether the trade mark incorporated still has an independent distinctive role (‘kennzeichnende Stellung’) in the composite sign.

13     According to the Oberlandesgericht, in the sector of the goods at issue in the proceedings before it prominence is generally given to the name of the manufacturer. More specifically, in the main proceedings the name of the manufacturer ‘THOMSON’ contributes in an essential manner to the overall impression conveyed b