UK: When is a Sign Identical to a Registered Trade Mark? - The Decision of the ECJ in LTJ Diffusion v SADAS

Last Updated: 1 April 2003

The question of whether "added matter" can be discounted so as to bring a sign within the scope of Section 10(1) of the Trade Marks Act 1994 (Article 5(1)(a) Directive 89/104/EEC) has been hotly debated in this country since Jacob J’s decision in British Sugar v James Robertson & Sons (the Treat case). The Advocate General’s Opinion in January last year suggested that the term "identical" in Section 10(1) be interpreted strictly. The ECJ gave its decision on 20 March 2003.


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 ("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 was 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 opposed successfully the registration in France of the mark "Arthur et Nina" by another company.)

Decision of the ECJ

In a short judgment, the ECJ stated that the criterion of identity of the sign and the trade mark under Article 5(1)(a) of the Directive (or Section 10(1) of the TMA) must be given a strict interpretation. These provisions will only assist the trade mark owner if the allegedly infringing sign reproduces all the elements of the trade mark "without any modification or addition". Identity between the sign and the mark must be assessed globally with respect to the average, reasonably well-informed, observant and circumspect consumer. According to the ECJ, "insignificant" differences may go unnoticed by this consumer and may therefore be disregarded in judging whether a sign is identical to a registered trade mark.


The ECJ decision mirrors the Opinion of the Advocate General. The net result is to confirm that the scope of a trade mark owner’s exclusive rights is narrower than many had understood it to be the case. Whilst there may be room for argument as to what additions are "insignificant", trade mark owners are likely to find increasingly 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 mean that more cases will be fought under Section 10(2) and, in practice, trade mark owners will need to demonstrate evidence of "confusion" to establish infringement – something which is notoriously difficult.

Application of the principle - a recent UK case – Miguel Torres v Cantine Mezzacorona

Herbert Smith acted for Miguel Torres (the Spanish wine producer) in appealing to the High Court the decision of the Trade Marks Registry in an opposition case. Despite Miguel Torres' existing registration of CORONAS for wines, the Hearing Officer accepted registration of the Mezzacorona (device) for wines. Several of the grounds of opposition concerned the fact that the word Mezzacorona was identical to the wine-producing commune in NE Italy called Mezzocorona from which the applicant’s wines were produced. The Court was referred to the Advocate General's Opinion in LTJ Diffusion during the hearing. Giving judgment on 26 March, Mr Justice Neuberger accepted that the difference between the word and the name of the commune was insignificant in the context of deciding whether the name of a smaller geographical unit for wine could be used as a brand name under Regulation 2392/89 (on wine labeling) and therefore whether it could be registered as a UK trade mark.

Article by Joel Smith and Naomi Gross

© Herbert Smith 2003

The content of this article does not constitute legal advice and should not be relied on as such. Specific advice should be sought about your specific circumstances.

For more information on this or other Herbert Smith publications, please email us.

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