OPINION OF ADVOCATE GENERAL

JACOBS

delivered on 2 April 1998 (1)

Case C-39/97

Canon Kabushiki Kaisha, Japan

v

Pathe Communications Corporation, U.S.A.

1.

    Article 4(1)(b) of the Trade Marks Directive (2) prohibits the registration ofa trade mark if 'because of its identity with, or similarity to, [an] earlier trade markand the identity or similarity of the goods or services covered by the trade marks,there exists a likelihood of confusion on the part of the public, which includes thelikelihood of association with the earlier trade mark‘.

2.

    In order to oppose the registration of a mark on the basis of that provisionit is accordingly necessary to show both that the mark is identical or similar to anearlier mark and that the goods or services covered by both marks are identical orsimilar.

3.

    The Bundesgerichtshof (Federal Court of Justice) wishes to know whether,in assessing whether goods or services should be considered to be similar within themeaning of that provision, the degree of distinctiveness of an earlier mark, inparticular its reputation, may be taken into account.

The Trade Marks Directive

4.

    The Trade Marks Directive harmonises the provisions of national trade-mark law which 'most directly affect the functioning of the internal market‘ (thirdrecital of the preamble to the Directive). Thus it harmonises, inter alia, thegrounds for refusing to register or invalidating a trade mark (Articles 3 and 4), andthe rights conferred by a trade mark (Article 5 et seq.).

5.

    Under Article 16(1) of the Directive, Member States were required toimplement its provisions by 28 December 1991. However, by Decision92/10/EEC, (3) the Council made use of the power conferred on it by Article 16(2)and postponed the deadline for implementing the Directive until 31 December1992.

6.

    Article 4(1) of the Directive, which concerns the ability to register a mark,provides that:

'A trade mark shall not be registered or, if registered, shall be liable to be declaredinvalid:

(a)    if it is identical with an earlier trade mark, and the goods or services forwhich the trade mark is applied for or is registered are identical with thegoods or services for which the earlier trade mark is protected;

(b)    if because of its identity with, or similarity to, the earlier trade mark and theidentity or similarity of the goods or services covered by the trade marks,there exists a likelihood of confusion on the part of the public, whichincludes the likelihood of association with the earlier trade mark.‘

7.

    Similarly, Article 5(1), which specifies the rights conferred by a trade mark,provides that:

'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 consentfrom using in the course of trade:

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

(b)    any sign where, because of its identity with, or similarity to, the trade markand the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of thepublic, which includes the likelihood of association between the sign and thetrade mark.‘

8.

    Marks with a reputation can benefit from yet further protection. Article4(4)(a) gives Member States the option of refusing the registration of a mark incertain circumstances if the mark is similar or identical to an earlier national markwhich has a reputation, even though the goods or services in respect of which thelater mark's application is made are not similar to the goods or services in respectof which the earlier mark is registered:

'Any Member State may furthermore provide that a trade mark shall not beregistered or, if registered, shall be liable to be declared invalid where, and to theextent that:

(a)    the trade mark is identical with, or similar to, an earlier national trade markwithin the meaning of paragraph 2 and is to be, or has been, registered forgoods or services which are not similar to those for which the earlier trademark is registered, where the earlier trade mark has a reputation in theMember State concerned and where the use of the later trade mark withoutdue cause would take unfair advantage of, or be detrimental to, thedistinctive character or repute of the earlier trade mark.‘

9.

    Where the earlier mark is a Community trade mark provided for by theCommunity Trade Mark Regulation, (4) Article 4(3) of the Directive allows for thesame type of objection to registration to be made by the owner of an earlierCommunity trade mark which has a reputation in the Community. In contrast toArticle 4(4)(a), Article 4(3) requires, rather than merely empowers, Member Statesto afford such protection.

10.

    Furthermore, Article 5(2) (which concerns the use, as opposed to theregistration, of a later mark) gives Member States a similar option to that providedin Article 4(4)(a):

'Any Member State may also provide that the proprietor shall be entitled toprevent all third parties not having his consent from using in the course of tradeany sign which is identical with, or similar to, the trade mark in relation to goodsor 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 signwithout due cause takes unfair advantage of, or is detrimental to, the distinctivecharacter or the repute of the trade mark.‘

11.

    It should, however, be noted that, although the question refers to marks witha reputation and Articles 4(4)(a) and 5(2) mention such marks specifically, theBundesgerichtshof has made it clear that the provision in question in the presentcase is Article 4(1)(b) for the reasons explained below. (5)

The facts

12.

    On 29 July 1986, Pathe Communications Corporation ('Pathe‘), which isbased in the United States of America, submitted an application to register theword trade mark 'CANNON‘ in respect of the following goods and services: 'films recorded on video tape cassettes (video film cassettes); production,distribution and projection of films for cinemas and television institutions‘.

13.

    That application was opposed by Canon Kabushiki Kaisha ('CKK‘) on thegrounds that it infringed its own word trade mark 'Canon‘. That mark had alreadybeen registered, inter alia, in respect of 'still and motion picture cameras andprojectors; television filming and recording devices, television transmission devices,television receiving and reproduction devices, including tape and disc devices fortelevision recording and reproduction‘.

14.

    At the time the opposition by CKK was lodged the Trade Marks Directivehad not been adopted and the national German law on trade marks accordinglyapplied. That law is known as the Warenzeichengesetz ('the WZG‘). TheDirective, adopted on 21 December 1988 and due to be implemented by 31December 1992, (6) was implemented late into German law by a law adopted on 25October 1994. The principal provisions of that law came into force on 1 January1995. However, the Bundesgerichtshof explains that the present case must bejudged on the basis of the law as it now stands, which gives effect to the Directive. The new German trade-mark law is called the Markengesetz and theBundesgerichtshof explains that Article 9(1)(2) of that law corresponds to Article4(1)(b) of the Directive.

15.

    According to the Bundesgerichtshof, it must be assumed for the purposesof legal assessment that the two marks 'CANNON‘ and 'Canon‘ sound identical. They are not, however, applied in respect of identical goods and services. Thequestion with which the German courts have been confronted is whether therespective goods and services can nevertheless be regarded as similar.

16.

    When Pathe's application was examined by the German authorities the firstexaminer considered that the goods and services of the opposing parties wereindeed similar and accordingly refused to register the mark 'CANNON‘. Thesecond examiner set aside that decision and dismissed the opposition on the groundthat there was no similarity. CKK appealed to the Bundespatentgericht (FederalPatent Court) but its appeal was dismissed by an order dated 6 April 1994. CKKthen appealed to the Bundesgerichtshof and it is in the context of thoseproceedings that the present reference has been made.

17.

    The Bundespatentgericht dismissed CKK's appeal because it agreed with thesecond examiner that there was no similarity, within the meaning of Paragraph5(4)(1) of the WZG, between the parties' goods and services. In its view, therecould be similarity only if the goods or services, in accordance with their economicsignificance and use, and with respect in particular to their usual places ofmanufacture and sale, had such close points of contact that the average purchasermight form the opinion that they came from the same business operation. CKKclaims that 76.6% of the population knew its mark in November 1985 and theBundesgerichtshof states that that must be taken as meaning that the mark'Canon‘ was a recognised mark. The Bundespatentgericht, however, consideredthat the reputation of CKK's mark was of no significance in assessing the similarityof the goods and services in question.

18.

    The Bundespatentgericht observed that the goods 'video film cassettes‘specified in Pathe's application were closest to the goods 'television filming andrecording devices, television transmission devices, television receiving and

reproduction devices, including tape and disc devices for television recording andreproduction‘ covered by CKK's mark. However, it considered that the two setsof goods were not similar. Disagreeing with the view taken by the Thirtieth Senateof the Bundespatentgericht in a similar case, it stated that it could not be assumedthat video film cassettes were similar to the television devices covered by CKK'smark or to the video cameras distributed by CKK.

19.

    It explained that the Bundespatentgericht had already found, in 1989, thatthere was not a single manufacturer of leisure electronic devices to be found amongthe video tape producers in the 1988 Seibt industry catalogue; no significantchanges had taken place in the meantime in that respect, at least in relation torecorded video cassettes; and inquiries in relevant specialist shops had shown thatno name of a manufacturer of television devices or video recorders could be foundin the range of recorded video cassettes. The Bundespatentgericht accordinglyconsidered that it could not be assumed that the relevant average purchaserthought that recorded video tapes and the corresponding recording andreproduction devices came from the same business operation. Even members ofthe public were sufficiently aware of the different conditions for the manufactureof recorded cassettes and understood that video cassettes and video recorders donot come from the same manufacturer.

20.

    The Bundespatentgericht also rejected the possibility of similarity betweenthe services specified in Pathe's application relating to 'production, distribution andprojection of films for cinemas and television institutions‘ and the television filmingdevices etc. protected by CKK's mark. The Bundespatentgericht considered thatthe fact that cameras and projectors were used to produce and project films did notmislead persons, to an extent relevant for trade-mark law purposes, to concludethat the producers of such devices regularly also produced, distributed or projectedfilms.

21.

    In its appeal against the order of the Bundespatentgericht, CKK argues that,since the implementation of the Trade Marks Directive into German law, theapproach of the Bundespatentgericht to the assessment of the similarity of goodsor services is no longer appropriate. It submits that its mark 'Canon‘ is a famousor well-known mark and that that fact, coupled with the fact that video filmcassettes and video recording and reproduction devices are offered through thesame points of sale, should lead to the conclusion that the goods covered by thetwo marks are similar and that there is consequently a likelihood of the publicbeing confused within the meaning of Paragraph 9(1)(2) of the Markengesetz. (7)

The question

22.

    The Bundesgerichtshof has accordingly referred the following question tothis Court for a preliminary ruling:

'May account be taken, when assessing the similarity of the goods or servicescovered by the two marks, of the distinctive character, in particular the reputationof the mark with earlier priority (on the date which determines the seniority of thelater mark), in particular in such a way that likelihood of confusion within themeaning of Article 4(1)(b) of the Directive must be taken to exist even if the publicattributes the goods and/or services to different origins?‘

23.

    The Bundesgerichtshof explains that the essential question is whether theadoption of the Trade Marks Directive requires the German courts to change theirapproach in assessing the similarity of goods or services. It accordingly seeks toascertain which criteria should be applied in assessing whether goods or services aresimilar within the meaning of Article 4(1)(b) of the Directive.

24.

    The order for reference contains the following information as to theimplementation of the Directive. When implementing the Directive, the Germanlegislature started from the assumption that the concept of the similarity of goodsor services could not be understood in the same way as that concept had beenunderstood under the previous German law. In the explanatory memorandum tothe draft Markenrechtsreformgesetz (Trade Mark Reform Law), it was stated that in future it would not be possible to refer back to the 'static‘ concept of similaritydeveloped in the previous law.

25.

    Under the previous law, there had to be objective similarity between thegoods or services: there was thus no protection under trade-mark law where therewas no objective similarity of goods and services, however similar the marks andwhatever the reputation of the earlier mark. Commentators argue that, sinceimplementation of the Directive, that is no longer the case: there is now an inversecorrelation between, on the one hand, the similarity of the goods and services and,on the other, the similarity of the marks and the distinctive character of the earliermark. Thus the closer the marks and the more distinctive the earlier mark, the lesssimilarity of goods or services needs to be shown. According to theBundesgerichtshof, such an interpretation would mean that it would be considerablyeasier than under the previous German law to demonstrate a likelihood ofconfusion.

26.

    The Bundesgerichtshof recognises that, in certain circumstances, where theearlier mark has a reputation, it can be protected even in relation to dissimilargoods and services by virtue of Article 4(4)(a) of the Directive. Although thatprovision is optional, the Bundesgerichtshof states that it has been implementedinto German law by Paragraph 9(1)(3) of the Markengesetz. However, theBundesgerichtshof stresses that it is important to distinguish between theapplication of Article 4(1)(b) and Article 4(4)(a) because, under national law, theinitial registration of a mark in relation to dissimilar goods cannot be opposed per

se under the national provisions implementing Article 4(4)(a): the person objectingcan only commence an action for cancellation of the mark once it has beenregistered or bring proceedings for infringement of his own mark, the idea beingthat the registration procedure should be carried out in an abstract, systematic way. Article 4(1)(b), on the other hand, is a ground for opposing the registration of amark. The question whether a particular use of a mark falls within Article 4(1)(b)or Article 4(4)(a) is accordingly of considerable practical importance.

The meaning of 'confusion‘

27.

    The question asks in part whether a likelihood (8) of confusion must be takento exist even if the public attributes the goods or services to different origins. Themeaning of 'confusion‘ in Article 4(1)(b) of the Directive has already beenconsidered by this Court in its judgment in the case of SABEL, delivered on 11November 1997. (9)

28.

    That case concerned the interpretation of Article 4(1)(b) of the Directivein so far as it refers to 'a likelihood of confusion on the part of the public, whichincludes the likelihood of association with the earlier trade mark‘. The Courtexplained that it had been submitted that 'the likelihood of association may arisein three sets of circumstances: (1) where the public confuses the sign and the markin question (likelihood of direct confusion): (2) where the public makes aconnection between the proprietors of the sign and those of the mark and confusesthem (likelihood of indirect confusion or association); (3) where the publicconsiders the sign to be similar to the mark and perception of the sign calls to mindthe memory of the mark, although the two are not confused (likelihood ofassociation in the strict sense)‘. (10)

29.

    The Court stated that it was therefore necessary to determine 'whetherArticle 4(1)(b) can apply where there is no likelihood of direct or indirectconfusion, but only a likelihood of association in the strict sense‘. (11) It concluded: 'The terms of the provision itself exclude its application where there is nolikelihood of confusion on the part of the public‘. (12) Thus the Court held that'the mere association which the public might make between two trade marks as aresult of their analogous semantic content is not in itself a sufficient ground for

concluding that there is a likelihood of confusion‘(13) within the meaning of Article4(1)(b).

30.

    It follows that if, in the present case, there is no likelihood of the publicassuming that there is any sort of trade connection between the marks 'Canon‘and 'CANNON‘, there is no likelihood of confusion within the meaning of Article4(1)(b) of the Directive. The Commission suggests however that the questionrefers to the attribution of goods or services to different 'places of origin‘; andthat concept may reflect the importance attached by the previous German trade-mark law to the place of manufacture of the goods in question. In that respect itshould be noted that it is not sufficient to show simply that there is no likelihoodof the public being confused as to the place in which the goods are manufacturedor the services performed: if, despite recognising that the goods or services havedifferent places of origin, the public is likely to believe that there is a link betweenthe two concerns, there will be a likelihood of confusion within the meaning of theDirective.

Assessment of the similarity of goods and services

31.

    The main argument in this case has focused on the question whether thedegree of distinctiveness of a mark, in particular its reputation, can be taken intoaccount when assessing whether goods or services should be regarded as similarwithin the meaning of Article 4(1)(b). In other words, is it permissible to considergoods or services to be similar in relation to particularly distinctive marks whensuch goods or services would not be considered to be similar in relation to other,less distinctive marks? Or should the test for assessing the similarity of goods orservices be objective (i.e. unrelated to the nature of the marks in question)?

32.

    All trade marks, if they are to perform their function, should be distinctive; a trade mark which is devoid of any distinctive character is, pursuant to Article3(1)(b) of the Directive, not to be registered and, if registered, is liable to bedeclared invalid. But distinctiveness is a matter of degree. A trade mark might beparticularly distinctive either because it is well known or because it is of an unusualcharacter. The more well known or unusual a trade mark, the more likely it is thatconsumers might be confused into believing there to be a trade connection betweengoods or services bearing the same or a similar mark. As the Court observed inits judgment in SABEL, 'the more distinctive the earlier mark, the greater will bethe likelihood of confusion‘. (14) It should be noted, however, that in that case, incontrast to the present case, it was not disputed that at least some of the goods towhich the marks in question related were the same; the question was whether the

marks (as opposed to the goods) in question were sufficiently similar to give riseto a likelihood of confusion.

33.

    CKK, the French Government and the Commission are all of the view thatthe degree of distinctiveness of a mark is relevant to the test of the similarity ofproducts or services. At the hearing the Italian Government stated that the notionof similarity is a very vague concept which cannot be based on objective factorsalone.

34.

    They refer to the tenth recital of the preamble of the Directive, which is inthe following terms:

'... whereas it is indispensable to give an interpretation of the concept of similarityin relation to the likelihood of confusion; whereas the likelihood of confusion, theappreciation of which depends on numerous elements and, in particular, on therecognition of the trade mark on the market, on (15) the association which can bemade with the used or registered sign, on (16) the degree of similarity between thetrade mark and the sign and between the goods or services identified, constitutesthe specific condition for such protection; whereas the ways in which likelihood ofconfusion may be established, and in particular the onus of proof, are a matter fornational procedural rules which are not prejudiced by the Directive‘.

35.

    CKK and the French Government argue that that recital, in particular thestatement that 'it is indispensable to give an interpretation of the concept ofsimilarity in relation to the likelihood of confusion‘, shows that the test of thesimilarity of goods or services is not to be regarded as an objective test.

36.

    CKK also argues that it is important to be able to oppose the initialregistration of a mark under Article 4(1)(b), rather than having to accept the initialregistration and attack its use under other provisions. It considers that parties toopposition proceedings are subject to lower costs and can present their rights moreeffectively and more efficiently than in other proceedings.

37.

    Pathe and the United Kingdom, however, advocate an objective,independent assessment of the similarity of the goods or services (i.e. an assessmentmade without regard to the nature or reputation of the earlier mark). The UnitedKingdom maintains that to require, at the stage of registering a mark, that thereputation of an earlier mark be taken into account when assessing the similarityof the goods or services in question would place an undue burden on examinersand considerably lengthen the registration process. Pathe also argues that largecompanies would deliberately delay registration processes.

38.

    Moreover, Pathe argues that flexible boundaries to the definition of similargoods or services would cause legal uncertainty. One final argument made by theUnited Kingdom is that, if the question of the likelihood of confusion had to beaddressed in order to decide whether goods or services were similar, there wouldbe no purpose in requiring such similarity: the only question would be whether ornot there was a likelihood of confusion; if that had been the intention, theDirective would have had a different structure.

39.

    In my view, the decisive consideration in resolving the issue is the statementin the tenth recital of the preamble to the Directive that the appreciation of thelikelihood of confusion depends in particular on the recognition of the mark. Thatstatement set in its context reads as follows:

'Whereas the protection afforded by the registered trade mark, the function ofwhich is in particular to guarantee the trade mark as an indication of origin, isabsolute in the case of identity between the mark and the sign and goods orservices; whereas the protection applies also in case of similarity between the markand the sign and the goods or services; whereas it is indispensable to give aninterpretation of the concept of similarity in relation to the likelihood of confusion; whereas the likelihood of confusion, the appreciation of which depends onnumerous elements and, in particular, on the recognition of the trade mark on themarket, [on] the association which can be made with the used or registered sign,[on] the degree of similarity between the trade mark and the sign and between thegoods or services identified, constitutes the specific condition for such protection...‘

That statement makes it clear that the recognition of the mark, although notspecifically mentioned in Article 4(1)(b) of the Directive, is relevant in decidingwhether there is sufficient similarity to give rise to a likelihood of confusion.

40.

    That view is also confirmed by the judgment of the Court in SABEL, inwhich it held that the 'likelihood of confusion must ... be appreciated globally,taking into account all factors relevant to the circumstances of the case‘. (17) It istrue that that statement was made in a different context: the Court was thereconsidering the question whether conceptual similarity of the marks alone couldgive rise to confusion within the meaning of Article 4(1)(b), in a situation in whichthe goods in question were clearly the same. However the statement is one ofgeneral application.

41.

    The United Kingdom Government seeks to refute the argument that thetenth recital of the preamble to the Directive supports a global approach. Itmaintains that that recital means simply that in assessing similarity regard shouldbe had to the question whether the goods or services are such that the public might

be confused into thinking that they have the same trade origin, and that in makingthat assessment it is not permissible to have regard to the reputation of the earliermark.

42.

    That explanation, however, requires the recital to be read as indicating thatthe question of confusion is to be taken into account in assessing the similarity ofgoods or services, but that one element of the confusion test, namely that of the'recognition‘ of the earlier mark 'on the market‘ (which is mentioned expresslyin the recital), cannot be taken into account in such an assessment. I have difficultyin reading the recital in that way. (The phrase 'recognition of the trade mark onthe market‘ to my mind refers to the degree of distinctiveness of the mark: i.e.whether it is readily recognised by the public, either because it has an inherentlyunusual nature or because of its reputation.)

43.

    In addition, the dangers of lengthening the registration process by requiringconsideration of an earlier trade mark's reputation do not appear to me to be asserious as Pathe and the United Kingdom Government suggest. The FrenchGovernment stated at the hearing that, in its experience, such consideration did notunduly lengthen or complicate the procedure. Indeed, it may be in the interest oflegal certainty to ensure that marks whose use may be challenged successfully arenot registered in the first place. In any event, it seems to me that the tenth recitalof the preamble to the Directive indicates that the reputation of a trade markshould be taken into account in assessing the likelihood of confusion between twomarks even if it cannot be taken into account in assessing the similarity of goodsand services. Moreover, the Community Trade Mark Registry will be obliged toconsider the question of the reputation of a mark in many cases since theCommunity Trade Mark Regulation contains a provision similar to Article 4(4)(a)of the Directive. Under Article 8(5) of the Regulation the proprietor of an earliermark which has a reputation can oppose, subject to certain conditions, theregistration of an identical or similar mark in relation to dissimilar goods orservices. That suggests that the practical problems of requiring registrars toconsider the reputation of a mark are not as great as has been argued.

44.

    I would emphasise that although in my view the degree of recognition of themark must be taken into account in deciding whether there is sufficient similarityto give rise to confusion, the requirement of similarity must be given full weight,both in assessing the similarity of the marks and in assessing the similarity of thegoods or services in question. It is therefore incorrect to suggest that, inconsequence of the implementation into national law of Article 4(1)(b) of theDirective, it may no longer be necessary in the case of a particularly distinctivemark to establish the similarity of the goods or services in question. In assessingthe similarity of the goods or services it will be helpful to have regard to the factorssuggested by the United Kingdom and French Governments.

45.

    According to the United Kingdom Government, the following type of factorsshould be taken into account in assessing the similarity of goods or services:

(a)    the uses of the respective goods or services;

(b)    the users of the respective goods or services;

(c)    the physical nature of the goods or acts of service;

(d)    the trade channels through which the goods or services reach the market;

(e)    in the case of self-serve consumer items, where in practice they arerespectively found or likely to be found in supermarkets and in particularwhether they are, or are likely to be, found on the same or different shelves;

(f)    the extent to which the respective goods or services are in competition witheach other: that inquiry may take into account how those in trade classifygoods, for instance whether market research companies, who of course actfor industry, put the goods or services in the same or different sectors. (18)

46.

    Whilst recognising that that list of factors is not exhaustive, the UnitedKingdom Government observed at the hearing that it nevertheless indicates acommon denominator which should be present in all factors taken into account inassessing the similarity of goods or services: namely that the factors are related tothe goods or services themselves.

47.

    The French Government likewise considers that, in assessing the similarityof goods and services, the factors to be taken into account should include thenature of the goods or services, their intended destination and clientele, theirnormal use and the usual manner of their distribution.

48.

    The use of those 'objective‘ factors to assess similarity does not howeverin my view preclude account being taken of the degree of recognition of the markin deciding whether there is sufficient similarity to give rise to a likelihood ofconfusion.

49.

    Against that view it might be argued that the simpler and more objective thetest of the similarity of goods and services under Article 4(1)(b), the less likelynational trade mark registries or courts in different Member States would be toadopt different assessments as to whether a particular mark is confusing. Thatwould be consistent with the Directive's aim of harmonising Member States' trade-mark laws.

50.

    I accept that a flexible test of the similarity of goods or services might leadto different interpretations of such similarity in different Member States. It isindeed possible that, contrary to the view in certain Member States, a new markmight not be caught by Article 4(1)(b) of the Directive in one Member State simplybecause it is considered in that State that, despite the reputation of the earliermark and a likelihood of confusion, the goods or services are not sufficientlysimilar. In such a case, however, the fact that the earlier mark has a reputationmay well mean that in that Member State Article 4(4)(a) or Article 5(2) of theDirective (concerning the protection of a mark in relation to dissimilar goods orservices) would apply instead. According to the understanding of the Commission,all Member States have availed themselves of the option provided by Article4(4)(a). (19) Thus the ultimate result in all Member States (namely the prohibition,or cancellation, of the registration of a mark or prohibition of its use) would oftenbe the same.

51.

    By way of a final observation I would add that I do not consider it unjust fora trade-mark owner to benefit from protection in relation to a wider range of goodsthan those in relation to which the mark is registered. It is not reasonable torequire a trade-mark owner to register his mark in relation to all types of goods inrelation to which use of his mark may give rise to a risk of confusion, because hemay not be using his mark in relation to such goods; indeed marks which areregistered in respect of goods or services in relation to which they are not used areliable to be struck off the register after five years on the grounds of non-use. (20) Moreover, the criterion of confusion ensures that when registering a mark inrelation to a certain class of goods or services, the trade-mark owner is not therebyprotected in relation to too broad a range of goods and services. The concept ofconfusion should not be extended too far since, as I observed in my Opinion inSABEL, (21) a broad interpretation would be contrary to the Directive's aim ofassisting the free movement of goods. However, where there is a genuine andproperly substantiated likelihood of confusion, it is in my view not only justifiablebut necessary to protect both the consumer and the trade-mark owner bydisallowing the registration of a later mark even in relation to similar goods andservices in respect of which the earlier mark is not registered.

Conclusion

52.

    Accordingly the question referred by the Bundesgerichtshof should in myopinion be answered as follows:

In the assessment of the similarity of goods or services covered by two marks withinthe meaning of Article 4(1)(b) of First Council Directive 89/104/EEC of21 December 1988 to approximate the laws of the Member States relating to trademarks, account may be taken of the distinctive character, in particular thereputation, of the earlier mark in deciding whether there is sufficient similarity togive rise to a likelihood of confusion. However, there will only be a likelihood ofconfusion within the meaning of that provision if it is likely that the public will beconfused into thinking that there is some sort of trade connection between thesuppliers of the goods or services in question.

1: Original language: English.

2: —    First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of theMember States relating to trade marks, OJ 1989 L 40, p. 1.

3: —    OJ 1992 L 6, p. 35.

4: —    Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,OJ 1994 L 11, p. 1.

5: —    See paragraph 26 below.

6: —    See paragraph 5 above.

7: —    As explained earlier, that provision corresponds to Article 4(1)(b) of the Directive.

8: —    The German version of the Directive speaks of a 'risk‘ of confusion, while the Englishversion speaks of a 'likelihood‘ of confusion.

9: —    Case C-251/95 SABEL v Puma, Rudolph Dassler Sport.

10: —    Paragraph 16 of the judgment.

11: —    Paragraph 17 of the judgment.

12: —    Paragraph 18 of the judgment.

13: —    Operative part.

14: —    Cited in note 8, paragraph 24 of the judgment.

15: —    The word 'of‘, rather than 'on‘, appears in the English text by mistake.

16: —    See note 14 above.

17: —    Cited in note 8, paragraph 22.

18: —    Taken from the judgment of the English High Court in British Sugar Plc v James Robertson& Sons Ltd on 23 May 1996, [1996] RPC 281.

19: —    Statement made by the Commission at the hearing in Case C-63/97 BMW on 13 January1998.

20: —    See Articles 10 to 12 of the Directive.

21: —    Cited in note 8, at paragraphs 50 and 51.