Case C-65/12, Leidseplein Beheer – trade mark elements of Bull, due cause, and prior use in good faith

Does the trade mark law concept of ‘due cause’ in Article 5(2) of Directive 89/104 apply to the situation where a similar sign was being used in good faith by a third party before the registration of the mark with a reputation?

Facts
Leidseplein Beheer, the applicant in cassation and defendant in the original action, holds various Benelux trade marks to a non-alcoholic drink known as ‘The Bulldog’. The claimant’s non-alcoholic drink is ‘Red Bull’. Spotting the occurrence of ‘bull’, Red Bull initially commenced proceedings in trade mark law to prevent the defendant from using the word ‘Bulldog’ or other sign containing the word ‘Bull’ on the defendant’s packaging. Red Bull alleged that the use of the word ‘Bull’ caused confusion with the corresponding trade mark registrations of Red Bull.

Red Bull commenced the litigation even though prior to registering its mark in 1983, ‘The Bulldog’ had been used in good faith as a trading name for ‘restaurant and catering services where drinks were sold’, and had been used for, and during, various merchandising activities. The dispute was litigated up to the Dutch Supreme Court.

The Dutch Supreme Court noted that the Amsterdam Court of Appeal had erred when it had applied the Benelux IP Convention’s concept of ‘due cause’ set out in Article 2.20(1)(c) together with its attendant case law of Claeryn v Klarein. The Benelux concept of ‘due cause’ should have been interpreted in accordance with the concept of ‘due cause’ found in Article 5(2) of trade mark law Directive 89/104 (now Directive 2008/95). However, it was not clear from the CJEU’s ‘keyword advertising’ judgment in Case C-323/09, Interflora that the EU’s concept of ‘due cause’ was in and of itself broader than the Benelux-concept of ‘due cause’ in circumstances, such as these, where the sign was being used in a trading name and in good faith before the registration of the mark with a reputation.

Question Referred

According to the Curia website, the Dutch Supreme Court asked:

Is Article 5(2) of Directive 89/104/EEC to be interpreted as meaning that there can be due cause within the meaning of that provision also where the sign that is identical or similar to the trade mark with a reputation was already being used in good faith by the third party/parties concerned before that trade mark was filed?

Update
The hearing before the First Chamber is scheduled for 27 February 2013.

Update 31 March 2013
After having read the written submissions of the parties, the EU Commission and Italy, and after having heard the oral observations of both parties and the Commission, Advocate General Kokott delivered her Opinion on 21 March 2013. Unofficially translated, she advised the CJEU to conclude:

When assessing whether a third party who, without due cause, uses a sign similar to a well-known mark takes unfair advantage from the distinctive character or the reputation of that well-known mark within the meaning of Article 5(2) of Directive 89/104/EEC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, the fact that the third party has already been using that sign in good faith for other products or services prior to the mark with a reputation having been filed or having acquired its reputation, should be taken into account and favour the third party.

Her reasoning ran as follows. The wording of Article 5(2) reads: ‘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’.

Although the wording of Article 5(2) mentions only cases where signs are used which are identical or similar to a well-known mark but are dissimilar to those goods or services for which the trade mark is registered, the scope of protection also covers the situation where a sign is used for identical or similar goods or services. Therefore, Article 5(2) applies here because the goods at stake are the same, namely, energy drinks.

The scope of Article 5(2) means that the holder of the well-known mark can prohibit third parties from using identical or similar signs in the course of trade. This right can be invoked even where there is no confusion among the relevant public. And the right covers three types of trademark infringement: dilution, tarnishment, and free-riding – any one of these will contravene Article 5(2).

That said, in the Amsterdam Court of Appeal the discussion was whether ‘unjustified advantage had been taken’ by ‘hooking onto’ the distinctive character or reputation of the trade mark – the focus being placed not so much on the detriment caused to the mark but rather on the advantage taken by the third party as a result of the use of the identical or similar sign. ‘Hooking onto’ covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.

However, the Dutch Supreme Court was primarily concerned with whether the use of the sign could be said to be ‘without due cause’ since the sign had been used by a third party in good faith prior to the mark being filed.

Advocate General Kokott noted Red Bull’s key submission. Namely, the phrase ‘without due cause’ had to be interpreted restrictively. There had to be some form of necessity for the sign’s use, and no reasonable ground for that person refraining from using the sign. In other words, there had to be some urgent reason for the use to be excluded. Kokott AG noted that Red Bull’s submission was founded on: an earlier unpublished judgment of the CFI dating from 2009 (T-21/07, L’Oréal v OHIM – Spa Monopole (SPALINE); a 2010 decision of an OHIM Board of Appeal; and the earlier 1975 ‘Claeryn v Klarein’ case law of the Benelux court.

She remarked that Red Bull’s submissions could perhaps derive some support from the Dutch version of the Directive but their force was weakened when other language versions of the Directive were taken into account. For whereas the Dutch version referred to ‘geldige reden’ [‘valid reason’] (suggestive of there needing to be a real legal right to use the sign), the German version required a ‘rechtfertigender Grund’, the French a ‘juste motif’, and the English was couched in terms of ‘due cause’ – versions whose wording did not connote the use of the sign needing to be justified by something obligatory. Accordingly, she Opined that it might be sufficient if the use was based on a legitimate interest, an interest which might outweigh the trademark holder’s interest. And at first blush, she could see no impediment as to why the earlier use of a sign could not form the basis to an interest which outweighed that of the right holder.

Even though the language versions of the Directive did not match, Kokott AG recognised that the provision still needed to be interpreted uniformly. Thus, the provision had to be interpreted by reference to the purpose and general scheme of the rules of which it formed a part. Looking at the drafting of Article 5(2), showed various interests had to be weighed. After all, the holder of a well-known mark cannot prohibit every single use of a mark or similar sign but can only prohibit use which without due cause allows either an unjustified advantage to be taken from, or a detriment to, the distinctive character or reputation of the mark. Accordingly, there is a close relationship between the fact that unjustified advantage is taken, or detriment occurs, and the fact that no due cause exists for the sign’s use. Determining whether due cause exists links to determining whether a sign has taken an unfair advantage from the distinctive character or reputation of the mark.

Kokott AG outlined the relevant circumstances to be taken into account: the extent of the reputation and the scale of distinctive character; the degree of similarity between the conflicting marks; the nature of the goods and services concerned, and the degree to which they are related. In so far as the extent of the reputation was concerned and the degree to which the older mark had a distinctive character, the greater the distinctive character and the reputation of that mark, the easier it will be to make a finding of detriment. The more direct and stronger the mark is evoked, the greater the likelihood that the use of the sign, either at that moment or in the future, will take advantage from, or be detrimental to, the distinctive character or the reputation of the older mark.

She also thought the referring court should also keep in mind that where the same goods were involved, the association was going to be made very quickly with the goods of the well-known mark. Yet the marks in the present case were not identical and corresponded only in their use of the word ‘bull’ – and the word bull used in De Vries’ sign was but one element in the word ‘Bulldog’, and was linked to a completely different image.

‘Unfair advantage’ is characterised by the fact that a third party attempts to use signs corresponding to trade marks with a reputation, to ride on its coat-tails in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark.

In that context, she attributed great importance to the fact that the sign ‘The Bulldog’ was filed under alcohol-free drinks as early as 1983. Although the trade mark ‘Red Bull’ was older by only a few days, it was doubtful whether Red Bull was already well-known at that particular moment. Mr De Vries can, in so far as this mark is concerned, rely on the principle recognised in EU law of ‘protected acquired rights’ in order to justify use for an alcohol-free energy-drink. If advantage is taken from an existing right, then this cannot in principle be unjustified and impermissible where on the basis of the fact that another mark subsequently becomes well-known, the scope of protection of the mark comes to clash with the scope of protection of existing marks.

On the other hand, Mr De Vries does not submit that he used this mark for energy-drinks before 1997. And the Dutch Supreme Court was not clear in its referring order that it had taken into consideration what the consequences were for this mark – its starting point had been much more that the mark had been used for other economic activities in the hotel, restaurant and catering sectors.

And yet such a use of a mark must also form a part of the balancing of the interests. After all, the use was also the result of the third party’s efforts. Through its earlier use, the sign could also have acquired a power of attraction, reputation and prestige whereby the legitimate interest of the third party also needed to be taken into account. This will apply to a lesser extent where the sign is used after the mark has been filed but before this mark becomes well-known.

Since the earlier use of a sign can also give rise to a power of attraction, reputation and prestige, current use can also be an appropriate means of satisfying the necessary origin-denoting function of the mark, and thereby contribute to informing the consumer. And thus it is quite possible in the present case that consumers in Amsterdam would sooner associate the sign of ‘The Bulldog’ with a specific company than they would with say the names of ‘De Vries’ or ‘Leidseplein Beheer’ or some other new indication.

The legitimate interest arising from the use of an earlier sign was equally not destroyed by the fact that Mr De Vries potentially only started his trade in energy-drinks after Red Bull had scored considerable success with its product. Trade mark law should not preclude specific companies from participating in the competition that exists in specific markets. As was apparent in the Interflora judgment, this form of competition in the internal market is actually desirable. In the context of this competition, companies must in principle have the right to use the signs with which they are known in the marketplace unless there is a risk of confusion.

Accordingly, to use Red Bull’s example of an established bookshop with the name of ‘Green Apple’ which starts to sell computers under that name, it cannot automatically be presumed that there is infringement in the rights of the well-known ‘Apple’ trade mark. In this respect, the Commission is correct in its submission that it will still be possible to stop specific forms of use of earlier-used signs when, having taken all of the relevant considerations into account, without due cause unfair advantage is being taken from, or detriment is being done, to the distinctive character or reputation of a a well-known mark. That could be the case where the form in which the sign appears creates the impression on the consumer that there is a special affinity with the well-known mark.

Therefore, when assessing whether the use of a sign without due cause takes an unfair advantage of the distinctive character or reputation of a well-known mark, the referring court should take account of each of the above factors.

Update – 20 January 2014
The First Chamber is due to hand down its judgment on 6th February 2014.

Update – 5 August 2014
Judgment

A version of the CJEU’s judgment in Case C-65/12, Leidseplein Beheer ECLI:EU:C:2014:49 is reproduced below. The reproduction is not authentic. Only the versions of the document published in the ‘Reports of Cases’ or the ‘Official Journal of the European Union’ are authentic. The source of the reproduction is the Eur-Lex Europa web site. The information on that site is subject to a disclaimer, a copyright notice and rules related to personal data protection.

JUDGMENT OF THE COURT (First Chamber)

6 February 2014 ()

(Request for a preliminary ruling – Trade marks – Directive 89/104/EEC – Rights conferred by a trade mark – Trade mark with a reputation – Protection extended to non‑similar goods or services – Use by a third party, without due cause, of a sign identical with or similar to the trade mark with a reputation – Definition of ‘due cause’)

In Case C‑65/12,

REQUEST for a preliminary ruling under Article 267 TFEU from the Hoge Raad der Nederlanden (Netherlands), made by decision of 3 February 2012, received at the Court on 8 February 2012, in the proceedings

Leidseplein Beheer BV,

Hendrikus de Vries

v

Red Bull GmbH,

Red Bull Nederland BV,

THE COURT (First Chamber),

composed of A. Tizzano, President of the Chamber, K. Lenaerts, Vice‑President of the Court, acting as Judge of the First Chamber, A. Borg Barthet, E. Levits (Rapporteur) and M. Berger, Judges,

Advocate General: J. Kokott,

Registrar: M. Ferreira, Principal Administrator,

having regard to the written procedure and further to the hearing on 27 February 2013,

after considering the observations submitted on behalf of:

–        Leidseplein Beheer BV and Mr de Vries, by T. Cohen Jehoram and L. Bakers, advocaten,

–        Red Bull GmbH and Red Bull Nederland BV, by S. Klos, advocaat,

–        the Italian Government, by G. Palmieri, acting as Agent, and by S. Fiorentino, avvocato dello Stato,

–        the European Commission, by F. Wilman and F. Bulst, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 21 March 2013,

gives the following

Judgment

1        This request for a preliminary ruling concerns the interpretation of Article 5(2) 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).

2        The request has been made in proceedings between Leidseplein Beheer BV and Mr de Vries (collectively, ‘Mr de Vries’), on the one hand, and Red Bull GmbH and Red Bull Nederland BV (collectively, ‘Red Bull’), on the other, concerning the production and marketing by Mr de Vries of energy drinks with packaging that displays the ‘Bull Dog’ sign or another sign containing the word element ‘Bull’ or other signs which are confusingly similar to the trade mark registrations of Red Bull.

 Legal context

 European Union law

3        Article 5 of Directive 89/104, subsequently reproduced, in essence, in Article 5 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), provides, under the heading ‘Rights conferred by a trade mark’:

‘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; the likelihood of confusion 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.

…’

 Netherlands law

4        Trade mark law in the Netherlands is based on the Benelux Convention on Intellectual Property (Trade Marks and Designs) signed on 25 February 2005 in The Hague (‘the Benelux Convention’).

5        Article 2.20(1)(c) of the Benelux Convention, which replaced the former Article 13(A)(1)(c) of the Uniform Benelux Law on Trade Marks, is worded as follows:

‘1.      A registered trade mark shall provide its owner with an exclusive right. Without prejudice to the possible application of ordinary law in matters of civil liability, the exclusive right to a trade mark shall permit the owner to prevent any third party, without its consent, from:

(c)       using in business a sign which is identical or similar to the trade mark for goods or services which are not similar to those for which the trade mark is registered, where the trade mark enjoys a reputation in the Benelux territory and where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trade mark;

…’

 The dispute in the main proceedings and the question referred for a preliminary ruling

6        Red Bull is the proprietor in the Benelux countries of, inter alia, the word and figurative mark ‘Red Bull Krating‑Daeng’ (‘the mark “Red Bull Krating‑Daeng”’), registered on 11 July 1983 for goods in, inter alia, Class 32 (non‑alcoholic drinks).

7        Mr de Vries is the proprietor in the Benelux countries of the following marks for goods in Class 32:

–        the word and figurative mark ‘The Bulldog’, registered on 14 July 1983;

–        the word mark ‘The Bulldog’, registered on 23 December 1999; and

–        the word and figurative mark ‘The Bulldog Energy Drink’, registered on 15 June 2000.

8        It appears from the order for reference to be common ground that, before Red Bull filed its mark in 1983, Mr de Vries was using the sign ‘The Bulldog’ as a trade name for hotel, restaurant and café services (‘hotel, restaurant and café services’) involving the sale of drinks. It is also common ground that the mark ‘Red Bull Krating‑Daeng’ enjoys a certain reputation in the Benelux countries.

9        As it took the view that Mr de Vries’ use of the distinctive sign ‘The Bulldog’ adversely affects the mark ‘Red Bull Krating‑Daeng’, in that it contains the word element ‘Bull’, Red Bull brought an action before the Rechtbank Amsterdam (Amsterdam District Court) on 27 June 2005 requesting that Mr de Vries be ordered to cease production and marketing of energy drinks in packaging that displays the ‘Bull Dog’ sign or any other sign containing the word element ‘Bull’ or any other signs which are confusingly similar to the trade mark registrations of Red Bull.

10      By his counterclaim, Mr de Vries applied for the revocation, in respect of the Benelux countries, of Red Bull’s rights in respect of the mark ‘Red Bull Krating‑Daeng’.

11      By decision of 17 January 2007, the Rechtbank Amsterdam dismissed all of those claims.

12      By judgment of 2 February 2010, the Gerechtshof te Amsterdam (Amsterdam Regional Court of Appeal) largely upheld the appeal brought by Red Bull against the decision of the Rechtbank Amsterdam. The Gerechtshof te Amsterdam held, first, that the mark ‘Red Bull Krating‑Daeng’ had a reputation within the Benelux countries and, secondly, that, because of the similarity, consisting in the common word element ‘Bull’, between that mark and the sign ‘The Bulldog’ used by Mr de Vries for energy drinks, the relevant public would make a connection between the trade mark and the sign, even if the two were not mistaken for each other.

13      The Gerechtshof te Amsterdam found that the sign ‘The Bulldog’ was similar to the mark ‘Red Bull Krating‑Daeng’ and that Mr de Vries, by riding on the coat-tails of that mark with a reputation, had sought to take advantage of the reputation of that mark with a view to having his share of the energy drinks market held by Red Bull and corresponding to a multimillion euro turnover.

14      The fact, relied on by Mr de Vries, that use of the mark ‘The Bulldog’ was a continuation of the use, commencing prior to 1983, of the sign ‘The Bulldog’ for merchandising and designating hotel, restaurant and café services, including the sale of drinks, was not considered by the Gerechtshof te Amsterdam to constitute due cause for allowing the use of that sign.

15      The Gerechtshof te Amsterdam found that Mr de Vries had not substantiated such a need to use that sign that he could not reasonably be expected to desist from such use.

16      Mr de Vries lodged an appeal in cassation before the Hoge Raad der Nederlanden (Supreme Court) against the judgment of the Gerechtshof te Amsterdam, claiming, inter alia, that the Gerechtshof te Amsterdam had given a restrictive interpretation to the concept of ‘due cause’, within the meaning of Article 5(2) of Directive 89/104 (‘the concept of due cause’). He claims, in the present case, that the use, in good faith, of the sign ‘The Bulldog’ as a trade name before the mark ‘Red Bull Krating‑Daeng’ was filed constitutes such due cause.

17      The referring court states that the Gerechtshof te Amsterdam had applied, in the case before it, the criterion of need to use a sign, set out in the judgment of the Benelux Court of Justice of 1 March 1975 in Colgate Palmolive v Bols (Claeryn/Klarein), in order to assess whether there was due cause to justify that use.

18      The referring court expresses doubts as to the Gerechtshof te Amsterdam’s interpretation of the concept of ‘due cause’. First, that concept, as provided for in Article 2.20(1)(c) of the Benelux Convention, must be interpreted in accordance with Article 5(2) of Directive 89/104. Secondly, in the judgment of 22 September 2011 in Case C‑323/09 Interflora and Interflora British Unit [2011] ECR I‑8625, the Court of Justice of the European Union interpreted the concept of due cause more widely than did the Benelux Court of Justice in Colgate Palmolive v Bols (Claeryn/Klarein).

19      In those circumstances, the Hoge Raad der Nederlanden decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is Article 5(2) of Directive [89/104] to be interpreted as meaning that there can be due cause within the meaning of that provision also where the sign that is identical or similar to the trade mark with a reputation was already being used in good faith by the third party/parties concerned before that trade mark was filed?’

 The question referred for a preliminary ruling

20      By its question, the referring court asks, in essence, whether Article 5(2) of Directive 89/104 must be interpreted as meaning that the use by a third party of a sign that is similar to a trade mark with a reputation in relation to goods identical to those for which that mark is registered may be considered to be with ‘due cause’, within the meaning of that provision, if it is demonstrated that that sign was being used before that mark was filed.

21      In the light of the circumstances of the case in the main proceedings, and in so far as the question referred calls for the interpretation of Article 5(2) of Directive 89/104, it should be borne in mind that, even though that provision makes express reference only to the situation in which use is made of a sign which is identical with, or similar to, a trade mark with a reputation in relation to goods or services which are not similar to those for which that trade mark is registered, the protection provided for applies, a fortiori, also in relation to use of a sign which is identical with, or similar to, a trade mark with a reputation in relation to goods or services which are identical with, or similar to, those for which the mark is registered (Interflora and Interflora British Unit, paragraph 68 and the case‑law cited).

22      Moreover, since it is common ground that the mark ‘Red Bull Krating‑Daeng’ has a reputation and that the proprietor of that mark seeks cessation by Mr de Vries of the production and marketing of goods, which are identical to those for which the mark in question is registered, in packaging which features a sign similar to that mark, Article 5(2) of Directive 89/104 may be applied to the case in the main proceedings.

23      The parties in the main proceedings disagree, however, on the scope of the concept of ‘due cause’. While Mr de Vries submits that the use, in good faith, of a sign that is similar to a mark with a reputation, in the case where that sign was being used before that mark was filed, can be covered by that concept, Red Bull claims that that concept covers only objectively overriding reasons.

24      In the first place, Red Bull claims that the broad interpretation of the concept of ‘due cause’ which is to be derived from Mr de Vries’ arguments would lead indirectly to the recognition of unregistered marks, whereas the Benelux Convention has set out, in accordance with Directive 89/104, a system for the protection of marks which is based exclusively on their registration.

25      In the second place, Red Bull argues that that interpretation would wrongly result in the scope of the rights for the protection of a mark which Article 5(2) of Directive 89/104 confers on the proprietor of a registered mark being narrower than the scope of the rights which that proprietor derives from Article 5(1).

26      It is therefore necessary, first of all, to determine the scope of the concept of ‘due cause’ before then going on to assess whether, in the light of the finding made in that regard, the use made of a sign similar to a mark with a reputation, before that mark was filed, is liable to come within the scope of that concept in the case where that sign is used in relation to goods or services which are identical to those for which that mark has been registered.

 Scope of the concept of ‘due cause’

27      It must be stated at the outset that the concept of ‘due cause’ is not defined in Directive 89/104. Moreover, the wording of Article 5(2) of that directive is not such as to support Red Bull’s strict interpretation of that concept.

28      That concept must therefore be interpreted in the light of the overall scheme and objectives of the system of which it forms part (see, to that effect, Case C‑292/00 Davidoff [2003] ECR I‑389, paragraph 24), and, in particular, must take into account the context of the provision which contains it (see, to that effect, Case C‑320/12 Malaysia Dairy Industries [2013] ECR, paragraph 25).

29      As a preliminary point, it should be borne in mind that, while Article 5 of Directive 89/104 provides that the registered trade mark confers on its proprietor an exclusive right, restrictions on the exercise of that right also arise from that provision.

30      It is thus settled case-law that the exclusive right under that provision was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of that mark, that is, to ensure that the trade mark can fulfil its functions. Therefore, the exercise of that right must be reserved to cases in which another party’s use of the sign adversely affects or is liable adversely to affect one of the functions of the trade mark. Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services in question, but also its other functions, such as that of guaranteeing the quality of those goods or services or those of communication, investment or advertising (Case C‑661/11 Martin Y Paz Diffusion [2013] ECR, paragraph 58 and the case‑law cited).

31      In that regard, it follows from the wording of Article 5(1) of Directive 89/104 and from the tenth recital in the preamble thereto that the laws of the Member States have been harmonised inasmuch as the exclusive right conferred by a trade mark affords the proprietor of the mark ‘absolute’ protection against the use by third parties of signs which are identical with that mark in relation to identical goods or services (Interflora and Interflora British Unit, paragraph 36).

32      Although the legislature described as ‘absolute’ the protection against the unauthorised use of signs identical with a trade mark in relation to goods or services identical with those for which the mark is registered, the Court has put that description into perspective by stating that, as extensive as it may be, the protection conferred by Article 5(1)(a) of Directive 89/104 is intended solely to enable the trade mark proprietor to protect its specific interests as proprietor of the mark, that is to say, to ensure that the trade mark can fulfil its functions. From this the Court has concluded that the exercise of the exclusive right conferred by the trade mark must be reserved to cases in which a third party’s use of the sign adversely affects, or is liable adversely to affect, the functions of the trade mark (Interflora and Interflora British Unit, paragraph 37).

33      Article 5(2) of Directive 89/104, however, establishes, for the benefit of trade marks with a reputation, a wider form of protection than that laid down in Article 5(1). The specific condition of that protection consists of a use without due cause of a sign identical with or similar to a registered mark which takes, or would take, unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark (Case C‑487/07 L’Oréal and Others [2009] ECR I‑5185, paragraph 34 and the case‑law cited).

34      When a Member State transposes Article 5(2) of Directive 89/104, it must therefore grant protection which is at least as extensive for identical or similar goods or services as it is for non-similar goods or services. The Member State’s option thus relates to the principle itself of granting greater protection to marks with a reputation, but not to the situations covered by that protection when the Member State grants it (see Case C‑408/01 Adidas‑Salomon and Adidas Benelux [2003] ECR I‑12537, paragraph 20).

35      Such a finding, however, cannot mean that the concept of ‘due cause’ should be interpreted by having regard to the scope of Article 5(1) of Directive 89/104.

36      As the Advocate General has essentially noted in point 29 of her Opinion, the purpose of Article 5(1) and (2) of Directive 89/104 is not the same and, accordingly, the rules for the protection of simple marks may apply in cases which are not governed by the provisions relating to the protection of marks with a reputation. Conversely, the rules for the protection of marks with a reputation may apply in cases which are not governed by the rules for the protection of simple marks.

37      Consequently, Red Bull and the Italian Government are wrong in their submission that the system for the protection of marks based on their registration, which was taken up by the Benelux Convention, precludes the scope of the rights conferred on the proprietor of a registered mark from being liable to circumscription.

38      The Court notes that it is only in certain circumstances that Article 5(2) of Directive 89/104 entitles proprietors of trade marks with a reputation to prohibit third parties from using signs identical or similar to their trade marks in relation to goods or services which are not similar to those in respect of which those marks are registered.

39      The protection of trade marks with a reputation is more extensive than that for simple marks, in that the prohibition of the use of a sign by a third party is not dependent on either the identity of the sign and mark in question, as referred to in Article 5(1)(a) of Directive 89/104, or the likelihood of confusion referred to in Article 5(1)(b) of that directive.

40      In particular, the proprietor of a mark with a reputation is not required, in order to claim the protection provided for in Article 5(2) of Directive 89/104, to prove detriment to the distinctive character or repute of that mark, where a third party, by using a sign identical or similar to that mark, takes unfair advantage of its reputation.

41      Nevertheless, the purpose of Directive 89/104 is generally to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (Case C‑145/05 Levi Strauss [2006] ECR I‑3703, paragraph 29).

42      It follows that the protection of rights which the proprietor of a trade mark derives from that directive is not unconditional, since in order to maintain the balance between those interests that protection is limited, in particular, to those cases in which that proprietor shows himself to be sufficiently vigilant by opposing the use, by other operators, of signs likely to infringe his mark (Levi Strauss, paragraph 30).

43      In a system for the protection of marks such as that adopted, on the basis of Directive 89/104, by the Benelux Convention, however, the interests of a third party in using, in the course of trade, a sign similar to a mark with a reputation must be considered, in the context of Article 5(2) of that directive, in the light of the possibility for the user of that sign to claim ‘due cause’.

44      Where the proprietor of the mark with a reputation has demonstrated the existence of one of the forms of injury referred to in Article 5(2) of Directive 89/104 and, in particular, has shown that unfair advantage has been taken of the distinctive character or the repute of that mark, the onus is on the third party using a sign similar to the mark with a reputation to establish that he has due cause for using such a sign (see, by analogy, Case C‑252/07 Intel Corporation [2008] ECR I‑8823, paragraph 39).

45      It follows that the concept of ‘due cause’ may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation.

46      Thus, the concept of ‘due cause’ is intended, not to resolve a conflict between a mark with a reputation and a similar sign which was being used before that trade mark was filed or to restrict the rights which the proprietor of that mark is recognised as having, but to strike a balance between the interests in question by taking account, in the specific context of Article 5(2) of Directive 89/104 and in the light of the enhanced protection enjoyed by that mark, of the interests of the third party using that sign. In so doing, the claim by a third party that there is due cause for using a sign which is similar to a mark with a reputation cannot lead to the recognition, for the benefit of that third party, of the rights connected with a registered mark, but rather obliges the proprietor of the mark with a reputation to tolerate the use of the similar sign.

47      The Court thus held in paragraph 91 of the judgment in Interflora and Interflora British Unit (a case concerning the use of keywords for internet referencing) that where the advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without being detrimental to the repute or the distinctive character of that mark and without, moreover, adversely affecting the functions of the trade mark concerned – an alternative to the goods or services of the proprietor of the trade mark with a reputation, it must be concluded that such a use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned and is thus not without ‘due cause’.

48      Consequently, the concept of ‘due cause’ cannot be interpreted as being restricted to objectively overriding reasons.

49      It is thus necessary to examine under what conditions the use by a third party of a sign which is similar to a trade mark with a reputation in relation to goods which are identical to those for which that mark is registered, where that sign was already being used before that mark was filed, may be covered by that concept.

 The conditions under which the prior use of a sign which is similar to a trade mark with a reputation may be covered by the concept of ‘due cause’

50      Mr de Vries claims in his observations that he has been using the sign ‘The Bulldog’ for hotel, restaurant and café services since 1975. It is apparent from the order for reference that that use has been established from a date prior to that on which the mark ‘Red Bull Krating‑Daeng’ was registered. In addition, Mr de Vries is the proprietor of the word and figurative mark ‘The Bulldog’ for, inter alia, non‑alcoholic drinks, registered on 14 July 1983. The date from which Mr de Vries has been producing and marketing energy drinks with packaging displaying the ‘Bull Dog’ sign is not specified.

51      It is common ground that Mr de Vries used the sign ‘The Bulldog’ in relation to services and goods other than those for which the mark ‘Red Bull’ was registered and before that mark had acquired its reputation.

52      The Court has held that, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or repute of that mark (see L’Oréal and Others, paragraph 49).

53      In order to determine whether the use by a third party, before a trade mark with a reputation was filed, of a sign similar to that mark may constitute ‘due cause’, within the meaning of Article 5(2) of Directive 89/104, and justify the fact that that third party takes advantage of the repute of that mark, the referring court must carry out an assessment, taking into account, in particular, two factors.

54      In the first place, such an assessment requires a determination as to how that sign has been accepted by, and what its reputation is with, the relevant public. In the present case, it is not disputed that the sign ‘The Bulldog’ has been used for a range of hotel, restaurant and café services since 1983 or before. The date from which Mr de Vries has offered energy drinks for sale is, however, not specified in the order for reference.

55      In the second place, it is necessary to examine the intention of the person using that sign.

56      In this regard, in order to determine whether the use of the sign similar to the mark with a reputation was in good faith, it is necessary to take account of the degree of proximity between the goods and services for which that sign has been used and the product for which that mark was registered, as well as to have regard for when that sign was first used for a product identical to that for which that mark was registered, and when that mark acquired its reputation.

57      First, where a sign has been used prior to the registration of a mark with a reputation in relation to services and goods which may be linked to the product for which that mark has been registered, the use of that sign in relation to that latter product may appear to be a natural extension of the range of services and goods for which that sign already enjoys a certain reputation with the relevant public.

58      In the present case, it is not disputed that Mr de Vries uses the sign ‘The Bulldog’ in relation to hotel, restaurant and café goods and services which include the sale of drinks. Consequently, in the light of the recognition enjoyed by that sign among the relevant public, and in the light of the nature of the goods and services for which it has been used, the sale of energy drinks contained in packaging which displays that sign may therefore be perceived, not as an attempt to take advantage of the repute of the mark ‘Red Bull’, but rather as a genuine extension of the range of goods and services offered by Mr de Vries. That impression would be strengthened even further if the sign ‘The Bulldog’ was used for energy drinks before the mark ‘Red Bull Krating‑Daeng’ acquired its reputation.

59      Secondly, the greater the repute of the sign used, prior to the registration of a similar mark with a reputation, for a certain range of goods and services, the more its use will be necessary for the marketing of a product identical to that for which the mark was registered, a fortiori as that product is close, by its nature, to the range of goods and services for which that sign was previously used.

60      Consequently, it follows from all of the foregoing considerations that the answer to the question referred is that Article 5(2) of Directive 89/104 must be interpreted as meaning that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:

–        how that sign has been accepted by, and what its reputation is with, the relevant public;

–        the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and

–        the economic and commercial significance of the use for that product of the sign which is similar to that mark.

 Costs

61      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. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (First Chamber) hereby rules:

Article 5(2) 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 the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:

–        how that sign has been accepted by, and what its reputation is with, the relevant public;

–        the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and

–        the economic and commercial significance of the use for that product of the sign which is similar to that mark.

[Signatures]


Language of the case: Dutch.