On March 20, 2003 (case C-291/00; Arthur et Félicie) the European Court of Justice (ECJ) adopted an interpretation of Article 5(1)(a) of the First Trade Mark Directive EEC 89/104 (the “Directive”). The Article provides trade mark protection insofar as it entitles the owner of a registered trade mark to prevent third parties using, in the course of trade, an identical sign for identical goods or services. Unlike Article 5(1)(b) of the Directive, which provides protection against similar (and thus not identical) signs for identical or similar goods or services, the trade mark owner does not have the burden of proving a “likelihood of confusion”.
By referring to the average consumer (who assesses trade marks and signs with a global perspective and who is deemed to be reasonably well informed, reasonably observant and circumspect), the ECJ has now ruled that a sign can be considered “identical” to a protected trade mark, even if the sign is not technically identical. Any differences, however, must be insignificant in such a way that those differences may go unnoticed by the average consumer.
The matter originated from the Paris Regional Court where LTJ Diffusion S.A. invoked the trade mark “Arthur” for clothing in order to oppose the use and declare invalid the registration of the sign “Arthur et Félicie” by Sadas Vertbaudet S.A. for clothing as well.
LTJ Diffusion argued that it would be entitled to object to Sadas’ sign based on Article L 713-2 and L 713-3 of the Code de la Proriété Intellectuelle, both Articles believed to be the correct embodiment of the implementation of Articles 5(1)(a) and (b) of the Directive. Article L 713-2 provides protection against identical signs, whilst Article L 713-3 provides protection against similar signs in respect of identical or similar goods or services if there is a likelihood of confusion.
In French case law, the former Article L 713-2 also covers cases in which a distinctive element of a complex trade mark is reproduced in a sign or where the distinctive element of a trade mark or a trade mark in its entirety is reproduced with additions that are deemed not to affect its identity.
The arguments of the parties
In its French case law-based approach towards Article 5(1)(a) of the Directive, LTJ Diffusion argued a broad interpretation. LTJ Diffusion claimed that Articles 5(1)(a) and 5(1)(b) must be interpreted in a manner which is effective, citing the habit of counterfeiters of adding a sign to a well-known mark which does not affect its identity.
Sadas impugned the interpretation of LTJ Diffusion as being not in conformity with the Directive. Sadas argued that the interpretation of the word ‘identical’ needs to be restricted, thereby saying the trade mark conflict should not be assessed under the situation regulated by Article 5(1)(a) as its sign and LTJ Diffusion’s trade mark are not identical. Effectively, Sadas tried to put the burden of proof of a likelihood of confusion on LTJ Diffusion.
The Paris Court stayed proceedings and requested a preliminary ruling on Article 5(1)(a) of the Directive, basically requesting whether French case law is consistent with that Article of the Directive.
“Identical”: restricted interpretation
By referring to the reasoning behind trade mark protection and the fact that Article 5(1)(a) of the Directive does not require evidence of a likelihood of confusion in order to afford absolute protection, the ECJ stressed that a strict interpretation of the criterion for finding that the sign and the trade mark are “identical” needs to be adopted. “Identical” applies where a sign reproduces all the elements of the trade mark, without any modification or addition.
But not too narrow
Nevertheless, the perception of sign and trade mark is ultimately decided by the hypothesis of the global assessment made by the average consumer. The sign produces an overall impression and the consumer is rarely able to make a direct comparison. This means that the consumer makes its assessment in the imperfect picture of sign and trade mark that this consumer has kept in his mind. This level of attention may vary according to the category of goods or services.
Having regard to the imperfect recollection by the consumer, insignificant differences between the sign and trade mark may go unnoticed.
The ECJ Ruling
Being advised in essentially the same way by Advocate General Jacobs, the ECJ has decided that Article 5(1)(a) of the Directive has to be interpreted in such a way that:
“… a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer”.
The interpretation adopted by the ECJ has to be welcomed. Often, the burden of proving a likelihood of confusion is a formidable hurdle, which could force the trade mark owner to actually wait (and invest in market research) until likelihood of confusion is evident before action can be taken against an infringing sign. Depending on the goods or services concerned, insignificant differences should not prevent the trade mark proprietor of invoking the national pendant of Article 5(1)(a) of the Directive, especially when willfully added to the owner’s trade mark. This judgment can be of assistance, for instance, to the well-known French and Italian perfume houses, where the counterfeiters sometimes escape from the scope of Article 5(1)(a) of the Directive by simply changing or adding one or two letters of the perfume’s trade mark.
This preliminary ruling by the ECJ will equally apply to Article 4(1)(a) of the Directive, listing grounds for refusal or invalidity on the basis of prior rights.
As the Community Trade Mark Regulation has similar provisions to Articles 5(1)(a) and 4(1)(a) of the Directive, it is to be expected that these provisions will be interpreted in the same way.
Also published in the May 2003 issue of WIPR.