Background

Article 4(1)(a) of the Trade Marks Directive provides that a trade mark cannot be registered if it is identical with an earlier trade mark and the goods or services in respect of which the application has been made are identical to the goods or services for which the earlier trade mark has been registered. Similarly, Article 5(1)(a) states that the use in the course of trade of a sign which is identical to a registered trade mark for goods or services identical to those in respect of which the mark has been registered will be an infringement of the trade mark owner’s exclusive rights. These provisions were implemented in the UK as Sections 5(1) and 10(1) of the Trade Marks Act 1994 (the “TMA”).

This case concerned LTJ Diffusion, a French company which produces and sells clothing under the name “Arthur”. “Arthur” is registered as a figurative trade mark in distinctive handwritten form in France for clothing. SADAS operate a mail order business selling clothing for children including under the name “Arthur et Félice”. That name is registered by SADAS as a word mark in France, and the form in which it is used did not reproduce the handwritten script of the LTJ Diffusion mark.

LTJ Diffusion objected to SADAS’s use of their mark before the Tribunal de Grande Instance in reliance of the provision of the provision of the French Intellectual Property Code which corresponds to Article 5(1)(a). (It had successfully opposed the registration in France of the mark “Arthur et Nina” by another company.)

The Advocate General’s Opinion

Advocate General Jacobs stated that the term “identical” should be given a strict interpretation. The protection afforded to trade mark owners under the Directive and the Regulation was “predicated on the existence of a likelihood of confusion, proof of which is superfluous” only in circumstances were the mark and the sign (in the case of infringement) or both marks (in the case of registrability) and the products covered are identical.

Article 5(1)(a) of the Directive (or Section 10(1) of the TMA) will only assist the trade mark owner if his mark has been reproduced without any addition, omission or modification other than those which are either minute or wholly insignificant. In assessing this, the court must make a global assessment of the features of the mark and the sign and the overall impression created by them, in particular by their distinctive and dominant components, so as to determine whether they would be perceived by the average, reasonably well-informed, observant and circumspect consumer (that increasingly familiar fictitious construct of the ECJ) as identical.

Comment

The question of whether “added matter” can be discounted so as to bring a sign within the scope of Section 10(1) of the TMA has been hotly debated since Jacob J’s decision in British Sugar v. James Robertson &S ons (the Treat case). The Opinion suggests that the scope of a trade mark owner’s exclusive rights are narrower than many had understood to be the case. If the ECJ chooses to follow the Opinion, there will be room for argument in the future as to what additions are “insignificant”. Nevertheless, trade mark owners will increasingly find that they can no longer rely on Section 10(1) TMA to prove infringement, but have to fall back on Section 10(2) TMA, which requires a likelihood of confusion between the mark and the sign. This will inevitably make pursuing infringers through the courts a more expensive and uncertain proposition.

© Herbert Smith 2002

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