CJEU, 21 Nov 2002, C-23/01 (Robelco), ECLI:EU:C:2002:706.

JUDGMENT OF THE COURT (Sixth Chamber)

21 November 2002 (1)

(Directive 89/104/EEC - Article 5(5) - Provisions on protection against use of a sign other than for the purposes of distinguishing goods or services - Extent of such protection - Signs similar to the mark)

In Case C-23/01,

REFERENCE to the Court under Article 234 EC by the Hof van Beroep te Brussel (Belgium) for a preliminary ruling in the proceedings pending before that court between

Robelco NV

and

Robeco Groep NV

on the interpretation of Article 5(5) 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 (Sixth Chamber),

composed of: R. Schintgen, President of the Second Chamber, acting for the President of the Sixth Chamber, V. Skouris, F. Macken (Rapporteur), N. Colneric and J.N. Cunha Rodrigues, Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: L. Hewlett, Principal Administrator,

after considering the written observations submitted on behalf of:

-    Robelco NV, by J. Stuyck, advocaat,

-    Robeco Groep NV, by P. Péters, advocaat,

-    the Netherlands Government, by H.G. Sevenster, acting as Agent,

-    the Commission of the European Communities, by K. Banks and H.M.H. Speyart, acting as Agents,

having regard to the Report for the Hearing,

after hearing the oral observations of Robelco NV, Robeco Groep NV and the Commission at the hearing on 5 March 2002,

after hearing the Opinion of the Advocate General at the sitting on 21 March 2002,

gives the following

Judgment

1.     By a judgment of 15 January 2001, received at the Court on 22 January 2001, the Hof van Beroep te Brussel (Court of Appeal, Brussels) referred to the Court for a preliminary ruling under Article 234 EC two questions on the interpretation of Article 5(5) 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 referred to as ‘the Directive’).

2.     Those questions were raised in proceedings between Robelco NV and Robeco Groep NV in which the latter requested that the former be ordered to desist from using the name Robelco, or any other name similar to the name Robeco, inter alia as a trade name or company name.

Legal background

Community legislation

3.     According to the first recital in its preamble, the purpose of the Directive is to approximate the laws of the Member States on trade marks in order to abolish existing disparities which may impede the free movement of goods and freedom to provide services and may distort competition within the common market.

4.     However, as the third recital in its preamble makes clear, the Directive does not effect full-scale approximation of the trade mark laws of the Member States.

5.     Article 5(1), (2) and (5) of the Directive, which is mainly concerned with determining the scope of the protection to be conferred by trade mark law, provides as follows:

‘1.    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:

(a)    any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(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.

2.    Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

...

5.    Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’

The Benelux Uniform Law on trade marks

6.     Since 1971 this area of law has been governed in the three Member States of the Benelux by the Uniform Benelux Law on Trade Marks (hereinafter ‘the UBL’).

7.     Article 13A(1) and (2) of the UBL, in the version in force until 31 December 1995, provided as follows:

‘Without prejudice to any application of the ordinary law governing civil liability, the exclusive rights in a trade mark shall entitle the proprietor to oppose:

1.    any use of the trade mark or a similar sign in respect of the goods for which the mark is registered or similar goods;

2.    any other use of the trade mark or a similar sign in the course of trade and without due cause which would be liable to be detrimental to the owner of the trade mark’.

8.     The UBL was amended with effect from 1 January 1996 by a Protocol signed on 2 December 1992, whose main purpose was to transpose the Directive.

9.     Article 5 of the Directive was transposed by an amended version of Article 13A(1) of the UBL, which now provides as follows:

‘Without prejudice to any application of the ordinary law governing civil liability, the exclusive rights in a trade mark shall entitle the proprietor to oppose:

(a)    any use, in the course of trade, of the mark in respect of the goods for which the mark is registered;

(b)    any use, in the course of trade, of the mark or a similar sign in respect of the goods for which the mark is registered or similar goods where there exists a risk of association on the part of the public between the sign and the mark;

(c)    any use, in the course of trade and without due cause, of a trade mark which has a reputation in the Benelux countries or of a similar sign for goods which are not similar to those for which the trade mark is registered, where use of that sign would take unfair advantage of, or would be detrimental to, the distinctive character or the repute of the trade mark;

(d)    any use, in the course of trade and without due cause, of a trade mark or of a similar sign other than for the purposes of distinguishing goods, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark’.

The main proceedings and the questions referred for a preliminary ruling

10.     Robeco Groep NV is a Dutch group founded in 1929 which markets financial products and services. Its main activity is asset management. It currently manages funds of over NLG 180 000 million, has approximately 770 000 clients and employs around 1 500 staff. It has used the name Robeco, which is a condensed form of the words ‘Rotterdams Beleggings Consortium’, since 1959.

11.     On 21 May 1987 the word ‘Robeco’ was registered as a word and figurative mark at the Benelux Trade Mark Office, together with a number of other marks in a series (including Rolinco, Rodamco, Roparco, Rotrusco). With one exception (Rodamco), those registrations are for services in Class 36 (financial and monetary matters, including services relating to saving and investing) of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

12.     Robelco NV is a Belgian company set up on 20 November 1996 by two investment companies with a nominal share capital of BEF 6 million. The company's activity is for the most part based in the province of Vlaams-Brabant (Flemish Brabant) and involves property promotion (including purchases, sales, exchanges, leases, the supply of loans and the financing of property projects), particularly in the sphere of business parks and tailor-made projects. The company has expanded rapidly since its incorporation.

13.     On 2 June 1999 Robeco Groep NV brought an action against Robelco NV before the Rechtbank van Koophandel te Brussel (Commercial Court, Brussels) (Belgium) for an order restraining the latter from making use of the name Robelco or of any sign similar to Robeco as a trade name or company name, on penalty of a payment of BEF 100 000 per day of delay. Robeco Groep NV contended, inter alia, that there had been an infringement of Article 13A(1)(d) of the UBL, as amended. On 9 February 2000 that court granted the application and prohibited Robelco NV from continuing to use its trade name or any sign similar to the name Robeco.

14.     On 21 March 2000 Robelco NV appealed against that decision to the Hof van Beroep te Brussel. The appellant claimed that the application should be dismissed in its entirety on the ground that Robeco Groep NV was in fact seeking trade mark protection under Article 13A(1)(b) of the UBL, as amended. In the alternative it argued that neither infringement of Article 13A(1)(d) of the UBL, as amended, nor damage to the trade name had been established.

15.     The national court found first of all that there had been no infringement of Robeco Groep NV's rights in its trade name. It went on to hold that, whilst clearly displaying visual similarities, on an aural level the names Robelco and Robeco could not be regarded as similar for the purposes of Article 13A(1)(d) of the UBL, as amended. It further found that the two companies pursued different activities and operated in different geographical markets.

16.     Finally the national court found, first, that Article 13A(1)(d) of the UBL, as amended, appeared to differ from Article 5(5) of the Directive. Unlike Article 5(5), Article 13A(1)(d) also covers use of a sign similar to the trade mark. Secondly, if the UBL, as amended, is consistent with Article 5(5) of the Directive, the national court questioned whether likelihood of confusion or similarity are material for the purposes of applying Article 5(5).

17.     In those circumstances the Hof van Beroep te Brussel decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)    Must Article 5(5) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the possibility laid down therein for protection by Member States can be afforded only against the use of a sign which is identical to the trade mark or can it also be afforded in that case against the use of a sign similar to the trade mark?

(2) If that protection can also be afforded against a sign similar to the trade mark, does unlawful similarity within the meaning of the abovementioned article require that confusion can arise as a consequence or is likelihood of association sufficient, in the sense that in the minds of those confronted by the trade mark and the sign one will suggest the other without any confusion resulting therefrom, or must no likelihood of association at all exist in that regard?’

The first question

18.     By its first question the national court is essentially asking whether Article 5(5) of the Directive must be interpreted as meaning that a Member State must protect a trade mark only against the use, for purposes other than that of distinguishing goods or services, of a sign identical with the trade mark, or also against such use of a sign similar to the trade mark.

Observations submitted to the Court

19.     According to Robelco NV, the purpose of Article 5(5) of the Directive is to permit a form of protection that is beyond the remit of trade mark law. The Benelux Member States thus availed themselves of the possibility of providing for more extensive protection than the minimal protection required under the Directive.

20.     Robelco NV submits that it is not possible to determine from the wording of Article 5(5) of the Directive, which relates to the scope of the protection that the Member States may allow trade marks to confer, whether that protection is confined to use of an identical sign, or extends to use of a similar sign. Robelco NV none the less considers that the words ‘a sign’ and ‘that sign’ in that provision must be construed as referring to an identical sign.

21.     According to Robelco NV, if that provision of the Directive was intended to allow protection against the use of a sign similar to a trade mark, marks without a reputation would, where they were used other than for the purposes of distinguishing goods or services, benefit from protection as extensive as that available for marks with a reputation under Article 5(2) of the Directive.

22.     Robeco Groep NV argues that Articles 5(1) and 5(2) of the Directive refer to signs that are identical with or similar to the trade mark, whereas Article 5(5) of the Directive does not expressly define the parameters of the concept of the word ‘sign’. However, according to Robeco Groep NV, it is common ground that the word ‘sign’ cannot be interpreted as referring exclusively to a sign identical to the mark, because the Directive did not explicitly exclude the possibility of protection for a sign similar to the mark.

23.     In that connection Robeco Groep NV contends that Article 5(5) of the Directive refers back to the law of the Member States, so that the solution must be sought in the UBL, as amended, and not in the Directive. To the extent to which Article 13A(1)(d) of the UBL, as amended, did not accord the protection granted to trade marks under the corresponding provision of the original version of the UBL, it does not go beyond the possibilities available under Article 5(5) of the Directive.

24.     The Netherlands Government considers that, in view of the circumstances in which the Directive was negotiated and the position under trade mark law in the Member States of the Benelux prior to its transposition, Article 5(5) of the Directive must be construed widely to apply to both identical and similar signs.

25.     The Commission contends that the purpose of Article 5(5) of the Directive is not to provide a particular form of protection, or to permit such protection in a harmonised context, but categorically to exclude it from harmonisation of the law of trade mark protection. According to the Commission, it is clear from the working documents on the Directive that the purpose of Article 5(5) is to exclude from the scope of the Directive the question of the protection afforded by trade marks under the original version of the UBL against the use of a sign other than for the purpose of distinguishing goods or services. Therefore Article 5(5) of the Directive cannot serve as a source for interpreting a provision of national law in a manner consistent with the Directive, because, where a specific area is excluded from the scope of Community intervention, the duty of transposition and interpretation in a manner consistent with Community law does not apply to that area.

26.     In the alternative, the Commission argues that Article 5(5) of the Directive does not make it clear that similarity between the sign in question and the registered trade mark is one of the factors that may result in infringement of the protection conferred by that provision. According to the Commission, whilst some connection between the trade mark and the sign is a condition for establishing such infringement, it is not clear from the wording of the Directive whether what is required is similarity, a likelihood of confusion or a likelihood of association.

Findings of the Court

27.     It must be observed, as the Commission rightly pointed out, that it is clear from the wording of Article 5 of the Directive that the purpose of that provision is to harmonise the scope of the protection to be afforded to trade marks within the Community.

28.     Thus, Article 5(1) of the Directive, which defines the content of exclusive rights in a trade mark, prohibits, at subparagraph (a), use of an identical sign for identical goods or services and, at subparagraph (b), use of an identical or similar sign for goods or services that are similar or identical where there is a likelihood of confusion, which includes the likelihood of association on the part of the relevant public.

29.     Article 5(2) of the Directive provides that any Member State may extend that protection, by prohibiting the use of a sign identical with, or similar to, a trade mark which has a reputation in the Member State in relation to goods or services which are not similar to those for which the trade mark is registered, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

30.     None the less, it is clear from Article 5(5) of the Directive that the harmonisation brought about by Article 5(1) to (4) does not affect national provisions relating to the protection of a sign against use other than for the purpose of distinguishing goods or services, where such use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

31.     It follows that reinforced protection of a trade mark's distinctive character or reputation against certain uses of a sign other than for the purpose of distinguishing goods or services is not covered by Community harmonisation.

32.     That conclusion is confirmed first of all by the third recital in the preamble to the Directive which states that ‘it does not appear to be necessary at present to undertake full-scale approximation of the trade mark laws of the Member States and it will be sufficient if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market’ and, secondly, by the sixth recital in the preamble which states that ‘this Directive does not exclude the application to trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer protection’.

33.     It must be recalled that the purpose of the Directive, which is the first harmonising directive in the area of trade mark law, is, according to the first recital in the preamble thereto, to approximate the laws of Member States on trade marks in order to abolish existing disparities which may impede the free movement of goods and freedom to provide services. The Directive does not, however, as the third recital of the preamble makes clear, seek a full-scale approximation of those laws.

34.     Accordingly, where, as in the main proceedings, the sign is not used for the purposes of distinguishing goods or services, it is necessary to refer to the legal orders of the Member States to determine the extent and nature, if any, of the protection afforded to owners of trade marks who claim to be suffering damage as a result of use of that sign as a trade name or company name.

35.     The Member States may adopt no legislation in this area or they may, subject to such conditions as they may determine, require that the sign and the trade mark be either identical or similar, or that there be some other connection between them.

36.     The reply to the first question must therefore be that Article 5(5) of the Directive must be interpreted as meaning that a Member State may, if it sees fit, and subject to such conditions as it may determine, protect a trade mark against use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The second question

37.     In view of the reply given to the first question there is no need to reply to the second question.

Costs

38.     The costs incurred by the Netherlands Government and the Commission, which have submitted observations to the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court.

On those grounds,

THE COURT (Sixth Chamber),

in answer to the questions referred to it by the Hof van Beroep te Brussel by judgment of 15 January 2001, hereby rules:

Article 5(5) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a Member State may, if it sees fit, and subject to such conditions as it may determine, protect a trade mark against use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Schintgen                    Skouris                    Macken

    Colneric                                    Cunha Rodrigues

Delivered in open court in Luxembourg on 21 November 2002.

R. Grass J.-P. Puissochet

RegistrarPresident of the Sixth Chamber

1: Language of the case: Dutch.