A reference for a preliminary ruling under Article 234 EC was received from the Oberlandesgericht Düsseldorf (Germany) at the European Court of Justice on March 5 2004 concerning the interpretation of Article 5 (1)(b) of First Council Directive 89/104/EEC of December 21 1988 in the case Medion AG (petitioner) v Thomson multimedia Sales German & Austria GmbH (defendant) dealing with the following question:
Is Article 5(1)(b) of the directive to be interpreted as meaning that where the goods or services covered by competing signs are identical there is also a likelihood of confusion on the part of the public where an earlier word mark with normal distinctiveness is reproduced in a later composite word sign belonging to a third party, or in a word sign or figurative sign belonging to a third party that is characterised by word elements, in such a way that the third party's company name is placed before the earlier mark and the latter, though not alone determining the overall impression conveyed by the composite sign, has an independent distinctive role within the composite sign?
Article 5(1)(b) of the directive provides:
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.
The question referred to the ECJ
Medion is the owner in Germany of the trade mark Life, registered on August 29 1998 for leisure electronic devices and achieves a multimillion euro turnover per annum in the manufacture and marketing of these products.
Thomson belongs to one of the world's leading companies in the leisure electronic devices sector and markets some of its products under the name Thomson Life.
In July 2002, Medion brought an action before the Landgericht (Regional Court) of Düsseldorf for trade mark infringement, requesting that Thomson be prevented from using the sign Thomson Life to designate certain leisure electronic devices. In the first instance, the Landgericht Düsseldorf rejected this application on the ground that there was no likelihood of confusion between the signs at issue, following which Medion appealed to the Oberlandesgericht (Higher Regional Court) of Düsseldorf. The latter 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.
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 signs 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.
The ECJ's reply
The essential function of the trade mark is to guarantee the identity of the origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.
A likelihood of confusion in the sense of Article 5(1)(b) of the directive exists if the addressed public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings.
Considering all the circumstances, according to the ECJ, the finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark. If such a condition were imposed, the owner of the earlier mark would be deprived of the exclusive right conferred by Article 5(1) of the directive even where the mark retained an independent distinctive role in the composite sign but that role was not dominant.
This would be the case where, for example, the owner of a widely known mark makes use of a composite sign juxtaposing this mark and an earlier mark which is not itself widely known. It would also be the case if the composite sign were made up of the earlier mark and a widely-known commercial name. In fact, the overall impression would be, most often, dominated by the widely known mark or commercial name included in the composite sign.
Thus, contrary to the intention of the Community legislator expressed in the 10th recital in the preamble to the directive, the guarantee of the earlier mark as an indication of origin would not be assured, even though it still had an independent distinctive role in the composite sign.
It must therefore be accepted that, in order to establish the likelihood of confusion, it suffices that, because the earlier mark still has an independent distinctive role, the origin of the goods or services covered by the composite sign is attributed by the public also to the owner of that mark. Accordingly, the reply to the question posed must be that Article 5(1)(b) of the directive 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.
On those grounds, the Court (Second Chamber) ruled as follows:
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 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.
With this ruling, the ECJ appears to have made a serious attack on the Prägetheorie of the Bundesgerichtshof. However, in cases where composite marks make-up a well-known company name (such as Blendax Pep/PEP), the Bundesgerichtshof has already ruled along the same lines as the EJC did in this case.
Stephan N Schneller |
