OPINION OF ADVOCATE GENERAL
PITRUZZELLA
delivered on 6 March 2019 (1)
Case C‑705/17
Patent- och registreringsverket
v
Mats Hansson
(Request for a preliminary ruling
from the Svea hovrätt (Svea Court of Appeal, Stockholm, Sweden))
(Reference for a preliminary ruling — Trade marks — Directive 2008/95/EC —Grounds for refusal or invalidity — Conflicts with earlier rights — Earlier mark containing a geographical name — Name excluded from protection by a disclaimer — Global assessment)
1. In certain legal systems, the registration of a trade mark may be accompanied by a note or remark recording a statement of waiver, a so-called ‘disclaimer’, if the application concerns a complex or composite sign that contains one or more descriptive or general words relating to the product(s) or service(s) covered by the application. Depending on the system of rules that applies, the disclaimer may be offered by the applicant voluntarily or may be required by the competent office as a condition of registration, and its purpose is to make it clear that the descriptive, non-distinctive word or words within the sign applied for will not be covered by exclusive rights and will thus remain available for general use. (2) The proprietor of the mark will not, therefore, be entitled to prohibit other undertakings from using the word or words in question.
2. Swedish law permits the use of such disclaimers. In the request for a preliminary ruling which is the subject of this Opinion, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden) has asked the Court of Justice whether, and if so under what conditions, in the event that there is a conflict between a sign for which registration as a trade mark is sought and an earlier mark, the fact that an element of the earlier mark is covered by a disclaimer affects the assessment of the likelihood of confusion that must be carried out for the purposes of Article 4(1)(b) of Directive 2008/95/EC. (3)
3. That question arose in a dispute concerning the rejection by the Patent- och registreringsverket (the Swedish Patent Registration Office, ‘the PRV’) of an application made by Mr Mats Hansson for registration of a national word mark.
Legal framework
EU law
4. Pursuant to Article 4(1)(b) of Directive 2008/95:
‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) if because of its identity with, or similarity to, the earlier trade mark and 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; the likelihood of confusion includes the likelihood of association with the earlier trade mark.’ (4)
5. Pursuant to Article 5(1)(b) of Directive 2008/95:
‘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:
…
(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.’ (5)
National law
6. Point 2 of the first paragraph of Article 10 of Chapter 1 of the varumärkslagen (2010:1877) (Law No 1877 of 2010 on trade marks, ‘the VML’), (6) which transposed into Swedish law Article 5(1)(b) of Directive 2008/95, defines the content of the exclusive right conferred on the proprietor of a registered trade mark to prohibit the use by unauthorised third parties of signs that would give rise to a likelihood of confusion or association with the registered trade mark.
7. In accordance with Article 5 of Chapter 2 of the VML, which transposed into Swedish law Article 3(1)(b) of Directive 2008/95, in order to be registered, a trade mark must have distinctive character in relation to the goods or services for which registration is sought.
8. In accordance with the first paragraph of Article 12 in Chapter 2 of the VML, if a trade mark contains an element which cannot be registered by itself and there is a clear risk that registration of the mark may give rise to uncertainty as to the scope of the exclusive right conferred on the proprietor, that element may be expressly excluded from protection at the time of registration. The second paragraph of Article 12 provides that, if that element subsequently satisfies the requirements for registration, that element or the trade mark in its entirety may be registered, following a fresh application, without the exclusion provided for in the first paragraph.
The main proceedings and the questions referred for a preliminary ruling
9. On 16 December 2015, Mats Hansson, the respondent in the main proceedings, lodged with the PRV, the appellant in the main proceedings, an application for registration of the word ROSLAGSÖL as a national word mark for goods in Class 32 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 (‘the Nice Agreement’), and, in particular, for non-alcoholic beverages and beers (‘the mark applied for’).
10. By decision of 14 July 2016, the PRV refused the application for registration because of the likelihood of confusion between the mark applied for and the earlier figurative mark ROSLAGS PUNSCH (‘the earlier mark’), which is shown below:
The earlier mark had been registered for alcoholic beverages in Class 33 of the Nice Agreement and has been held since 2007 by the company Norrtelje Brenneri Aktiebolag. (7) The registration of the earlier mark was accompanied by the following remark: ‘Registration does not give an exclusive right over the word “Roslagspunsch”’.
11. Roslagen is the name of a geographical region on Sweden’s eastern seaboard.
12. In reaching its conclusion that there was a likelihood of confusion, the PRV took account of the fact that the marks at issue both began with the descriptive term ‘Roslags’, which was dominant in both signs, and that the two marks were to be used for identical or similar goods that were likely to be distributed via similar channels and sold to the same customers.
13. Mr Hansson brought an action against the PRV’s decision of 14 July 2016 before the Patent- och marknadsdomstolen (Patents and Market Court, Sweden), arguing that there was no similarity between the mark applied for, which was a word mark, and the earlier mark, which was a figurative mark, and that the word ‘Roslagen’ was commonly used in the distinctive signs used by firms in the region to which the word referred. In the course of the proceedings before the Patent- och marknadsdomstolen (Patents and Market Court), the parties expressed their positions on the effect of the disclaimer which accompanied the registration of the earlier mark. The PRV submitted that, as a rule, the elements of a mark that are excluded from protection because of a disclaimer are regarded as lacking in distinctive character and cannot therefore be taken into consideration in the assessment of the likelihood of confusion. The PRV nevertheless stated that its practice with regard to the registration of geographical names had changed over time and that, in accordance with the rules currently followed, the word ‘Roslags’, appearing in the earlier mark, must be taken into consideration, notwithstanding the disclaimer, in assessing whether there was a ground for refusal arising from a likelihood of confusion with the earlier mark. (8)
14. The Patent- och marknadsdomstolen (Patents and Market Court) upheld Mr Hansson’s action. It found, in essence, that, notwithstanding the disclaimer, the words ‘Roslags’ and ‘Punsch’ did have to be taken into consideration in the assessment of the likelihood of confusion between the marks at issue, because of their effect on the overall impression given by the earlier mark. However, according to that court, the figurative elements of the earlier mark and the fact that the verbal element of the earlier mark comprised two separate words were sufficient to render the two marks visually different. It also took the view that the difference between the verbal element ‘punsch’ in the earlier mark and the letters ‘öl’ at the end of the word that constituted the mark applied for, meant that there was little aural similarity between the two marks. Finding also that there was only a low degree of similarity between the goods in question, the Patent- och marknadsdomstolen (Patents and Market Court) concluded that there was no likelihood of confusion.
15. The PRV brought an appeal against the judgment at first instance before the referring court.
16. The referring court observes that, although provisions of substantive law on the protection of trade marks are fully harmonised by Directive 2008/95, procedural rules remain, in principle, within the competence of the Member States. It questions whether a national provision which permits the lodging of a disclaimer at the time of registration of a mark may be regarded as a procedural rule where it has the effect of altering the criteria by reference to which the assessment of the overall impression given by a mark is carried out in the context of the assessment of the likelihood of confusion pursuant to Article 4(1)(b) of Directive 2008/95.
17. The referring court also queries whether such a provision precludes the elements of a mark covered by a disclaimer from being excluded from the assessment of the likelihood of confusion, or their being ascribed lesser importance, in the context of that assessment, than they would have been given in the absence of the disclaimer.
18. In this connection, the referring court points out that, in a judgment of 1991, (9) the Högsta förvaltningsdomstolen (Supreme Administrative Court, Sweden, formerly known as Regeringsrätten), which was at that time the highest Swedish court for trade mark matters, held that the elements of a registered trade mark covered by a disclaimer had to be taken into consideration in determining the overall impression given by the mark for the purposes of the assessment of the likelihood of confusion with a later mark. However, in more recent judgments, given by courts other than the court of last instance, the elements covered by a disclaimer have been regarded as having no distinctive character and consequently as having less weight in the assessment of the overall impression given by a trade mark. (10)
19. It was in that context that, by decision of 20 November 2017, the Svea hovrätt (Svea Court of Appeal, Stockholm) stayed the proceedings before it and referred the following questions to the Court for a preliminary ruling:
‘Must Article 4(1)(b) of … Directive [2008/95] be interpreted as meaning that the global assessment of all relevant factors which is to be made in an assessment of the likelihood of confusion may be affected by the fact that an element of a trade mark has expressly been excluded from protection on registration, that is to say, that a so-called disclaimer has been entered on registration?
If the answer to the first question is in the affirmative, can the disclaimer in such a case affect the global assessment in such a way that the competent authority has regard to the element in question but gives it a more limited importance so that it is not regarded as being distinctive, even if the element is de facto distinctive and prominent in the earlier trade mark?
If the answer to the first question is in the affirmative and the answer to the second question in the negative, can the disclaimer even so affect the global assessment in some other way?’
Procedure before the Court of Justice
20. The PRV, Mr Hansson and the European Commission have submitted written observations to the Court, in accordance with Article 23 of the Statute of the Court of Justice of the European Union. Those parties attended the hearing on 13 December 2018.
Analysis
21. By the three questions which it has referred for a preliminary ruling, which it is appropriate to deal with together, the Svea hovrätt (Svea Court of Appeal, Stockholm) essentially asks whether an element of an earlier mark that is covered by a disclaimer can affect the assessment of the likelihood of confusion, within the meaning of Article 4(1)(b) of Directive 2008/95, and if so how.
22. Although they are not expressly contemplated by Directive 2008/95, disclaimers, for which provision is made in only a very few Member States, (11) cannot be regarded as in themselves inconsistent with that directive. (12) As stated in recital 4 thereof, Directive 2008/95 does not pursue the objective of full-scale approximation of the trade mark laws of the Member States, but instead seeks to harmonise only those national provisions of law which most directly affect the functioning of the internal market, (13) such as those governing the conditions for obtaining and continuing to hold registered trade marks, (14) leaving the Member States ‘free’ to fix the provisions of procedure, (15) including those relating to the registration of trade marks. (16)
23. The system of regulation of the EU trade mark, in parallel with harmonised national systems, (17) has, for over 20 years, permitted the registration of signs containing elements which are not distinctive, provided that the applicant lodges, at the request, initially, of the Office for Harmonisation in the Internal Market (OHIM) and, subsequently, of the European Union Intellectual Property Office (EUIPO), a statement disclaiming any exclusive right over such elements. (18)
24. The consistency with Directive 2008/95 of the use of disclaimers is nevertheless conditional on compliance with the provisions of that directive.
25. For example, a disclaimer cannot be used in order to obtain registration of a mark comprising only descriptive or non-distinctive elements, (19) which would be in breach of Article 3(1)(b) and (c) of Directive 2008/95. More generally, given that the function of disclaimers is to enable the registration of marks which are registrable as a whole but which contain within them elements that, taken in isolation, are not registrable, it would be contrary both to that function and to the provisions of Directive 2008/95 if a disclaimer could be used to overcome absolute impediments to registration of a mark. Equally, a disclaimer cannot be allowed if it relates to the distinctive elements of the mark applied for. Such a disclaimer would not only contravene the rules of Directive 2008/95 which lay down the requirements for obtaining a mark, but would also unduly restrict the scope of the protection afforded to the mark, which the directive intended to be unitary in character. (20)
26. In short, the idea of a disclaimer is not in itself incompatible with Directive 2008/95, provided that its function is confined to making explicitly clear, in the interests of greater transparency and legal certainty, the limits of the protection afforded to the registered mark (as regards certain of its elements), resulting from the application of the provisions concerning the absolute impediments to registration laid down in Directive 2008/95. I would point out in this connection that paragraph 1(b) of Article 6 of the directive, which is headed ‘Limitation of the effects of a trade mark’, provides that a trade mark does not entitle its proprietor to prohibit third parties from using, in the course of trade, ‘indications (21) concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services’, (22) thus emphasising, in general terms, that such indications — which are not in themselves registrable as trade marks — (23) remain available for use even if they are elements of a composite or complex sign that has been registered as a mark. (24)
27. While the registration of a trade mark accompanied by a disclaimer may, within the limits I have described, be regarded as being in line with Directive 2008/95, and now Directive 2015/2436, it is necessary to consider, as the referring court asks the Court of Justice to do, what consequences flow from such a waiver in the event that a conflict arises between such a trade mark and a later sign.
28. The protection afforded to a trade mark entails, in accordance with Article 5(1)(b) of Directive 2008/95, the right for the proprietor of the mark to prevent third parties not having his consent from using in the course of trade ‘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’. By the same token, Article 4(1)(b) of the directive provides that a trade mark may not be registered or, if registered, is liable to be declared invalid where there exists the same likelihood of confusion with an earlier mark.
29. The likelihood of confusion thus constitutes the ‘specific condition for [the] protection’ afforded to registered trade marks by Directive 2008/95, in particular, against the use by third parties of non-identical signs. (25) The Court has defined that condition as the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. (26)
30. As indicated in recital 11 of Directive 2008/95, (27) a number of factors come into play in the assessment of the likelihood of confusion, in particular, the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the conflicting signs and between the goods or services which they designate. The likelihood of confusion must therefore be assessed globally, with account being taken of all the relevant factors of the case at hand. (28)
31. In particular, in order to assess the degree of similarity between conflicting signs, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed. (29) The visual, aural or conceptual similarity of the signs in question must be the subject of a global assessment in which the perception of the signs by the average consumer of the goods or services in question plays a decisive role. (30) It has been clarified in the case-law that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. (31) The global assessment of the visual, aural or conceptual similarity of the conflicting signs must therefore be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. (32) The Court has also clarified that assessing the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign, and that the comparison must be made by examining each of the signs in question as a whole. (33) The Court has stated that, in principle, even an element that has only weak distinctive character may dominate the overall impression of a composite mark if, in particular, because of its position in the sign or its size, ‘it may make an impression on consumers and be remembered by them’. (34) Lastly, the Court has clarified that the appraisal of the similarity between signs must not be carried out in the abstract, but must take specific account of the manner in which the consumer comes into contact with the mark, having regard in particular to the fact that ‘the average consumer only rarely has the chance to make a direct comparison between … different marks but must place his trust in the imperfect picture of them that he has kept in his mind’. (35)
32. From the principles which I have set out above flow two fundamental points of guidance for answering the questions which have been raised in the present reference for a preliminary ruling.
33. In the first place, as we have seen, the similarity between conflicting signs must be assessed by reference to the public’s perception. That rule, the criteria for the application of which the Court of Justice and the General Court have progressively defined in the case-law, has its origin in the function which EU law ascribes to trade marks. In Directive 2008/95 (and now in Directive 2015/2436), as in the regulation on the European Union trade mark, (36) a trade mark is protected first and foremost because of its distinguishing function, (37) that is, as a sign which identifies the commercial origin of the goods or services which it designates. The likelihood of confusion, as a pre-condition for protection of a trade mark, is a test designed to ensure that that function may operate without interference among those to whom the mark is addressed, that is to say, the consumers of the goods or services which the mark designates.
34. If the assessment of the similarity between conflicting signs, in the context of an assessment of the likelihood of confusion, were to be carried out only after excluding from consideration one of the components of the earlier sign, the image of the sign with which the public comes into contact would thereby be distorted and it would therefore be more difficult to form a conclusion in strict alignment with the perception of the relevant consumer in the particular case at hand, which is, however, required by the case-law I have cited. (38)
35. In the second place, in accordance with the case-law of the Court of Justice and the General Court, the rule relating to perception that is of pre-eminent importance is that the mark must be perceived as a whole. Admittedly, the various components of a mark must be analysed individually, in order to determine the relative importance of each of them within the mark and the relationships between them. However, the purpose of that analysis is to determine, through a synthesis of those factors, the overall impression conveyed by the sign as a whole that is likely to be remembered by the relevant public. Two consequences flow from that.
36. First, if the similarity between conflicting signs, on which the existence of a likelihood of confusion depends, (39) must be assessed by reference to the overall impression conveyed by the signs to the average consumer of the goods or services in question, it follows that the proprietor of a complex mark may not, irrespective of the existence of a disclaimer, claim exclusive rights over only one part of the mark. The protection afforded by Article 5(1)(b) of Directive 2008/95 operates against the use of signs which might be confused with a trade mark considered as a whole, not as regards its individual elements. This further relegates the function of disclaimers to that of a simple means of clarifying the limits of the protection which the mark enjoys.
37. Secondly, the fact that it is necessary to reconstruct the overall impression created by a mark militates in favour of the view that the existence of a disclaimer will have no effect on the manner in which the comparison of conflicting marks must be carried out. Indeed, to exclude from consideration the element covered by a disclaimer would both alter the actual determination, on the basis of the public’s perception, of the overall impression created and render it necessary to ‘dissect’ the various components of the mark, which would be not only an artificial exercise but one that could prove difficult in practice. (40)
38. In conclusion, given that the rules relating to perception must be observed in the assessment of the similarity between conflicting signs and the fact that that assessment must be strictly objective, I think the existence of a disclaimer covering just one element of a mark for which protection is sought should not alter the parameters of that assessment: it should result in neither the exclusion of that element from consideration, nor the attribution to that element of a value within the sign or a distinctive character other than that which it actually has. The determination, through a synthesis of all the factors, of the overall impression conveyed by the mark as a whole must, even in such a case, be arrived at solely by reference to the perception of the relevant public.
39. As I have mentioned, similarity between conflicting signs is only one of the factors on which a likelihood of confusion depends.
40. Whether or not a likelihood of confusion as to origin exists must be determined in the context of a final assessment in which all the factors relevant to the circumstances of the case are taken into account and weighed. (41)
41. Even in the context of such an assessment, the perception of the public plays a central role. (42) As the Court of Justice has repeatedly held, ‘a global assessment of the likelihood of confusion implies some interdependence between the relevant factors’. (43) Establishing the relationships between those various factors and balancing them, in particular the similarity between the marks and the similarity between the goods or services which they designate, must be done from the perspective of the relevant public. The existence of interdependence between the various factors that come into play has been recognised by the Court precisely so that the assessment of the likelihood of confusion will be, as far as possible, in line with actual public perception.
42. Among the factors that must be taken into consideration in the assessment of the likelihood of confusion, the Court of Justice has also included the distinctive character, original or acquired, of the mark for which protection is sought. (44)
43. The greater or lesser identifying power of a mark must also be assessed from the perspective of the relevant public and in the light of all the circumstances of the case (45) and, again, account must be taken of all the components of the mark. To expunge from that assessment one of the elements of a complex mark, or to ascribe to it a weight other than that which it actually has, could affect the global assessment of the identifying power of the mark. That identifying power depends of how capable the sign is of conveying a message which the public will associate with the goods of services covered. While that message will be conveyed principally by the more distinctive and dominant elements of the mark, it is with reference to the sign viewed as a whole, and therefore in the light of all of its components, that it is necessary to evaluate its capacity to identify the origin of the goods or services.
44. I should also point out that, in the assessment of the likelihood of confusion, the identifying power of the mark for which protection is sought must be appraised as at a relevant time after the date of application for registration. (46)
45. Indeed, it cannot be ruled out that an element of a complex mark which, at the time when the mark was registered, was devoid of distinctive character, being merely descriptive, will have become distinctive with the passage of time, for example, as a result of the use that has been made of the mark, and especially where the importance within the mark of the element in question is not merely negligible or even dominates the overall impression which the mark conveys to the relevant public.
46. The facts of the case in the main proceedings provide a clear illustration of this. It became clear at the hearing (47) that, between the time of registration of the earlier mark and the assessment of the likelihood of confusion between that mark and the mark applied for, the PRV had changed its practice with regard to the registration of indications of geographical origin, bringing it into line with the criteria — more consistent with the rules relating to perception (48) — laid down by the Court in its judgment of 4 May 1999, Windsurfing Chiemsee (C‑108/97 and C‑109/97, EU:C:1999:230), with the result that, under its new practice, it no longer regarded the element of the earlier mark covered by the disclaimer as being devoid of distinctive character.
47. To exclude from the assessment of the degree of distinctiveness of a mark which must be carried out when assessing the likelihood of confusion pertaining to one of its elements for the sole reason that, in the examination that was carried out at the time of registration, that element was regarded as devoid of distinctive character, thus necessitating the use of a disclaimer, would mean that no account could be taken of how the perception of the mark might have changed between the time when it was registered and the time when the assessment of the likelihood of confusion is carried out, or indeed of any other factor arising subsequently to registration that could influence that assessment.
48. That would not only stand in the way of determining the identifying power of the mark in current, effective and specific terms, as is required for the purposes of examining of the likelihood of confusion, but could also, given the interdependence of the various factors that enter into consideration, (49) result in an incorrect appraisal of the likelihood of confusion.
49. I therefore think — in line with my conclusion regarding the assessment of the similarity between conflicting signs — that the existence of a disclaimer covering one of the elements of the mark for which protection is sought should affect neither the determination of the degree of distinctiveness of the mark nor the final assessment of the likelihood of confusion in which the various factors which enter into consideration are assessed and weighed, one against the other.
50. More generally, the existence of a disclaimer, such as that at issue in the case in the main proceedings, should not, in my view, alter the rules for the assessment of the likelihood of confusion, which have been harmonised at EU level. In particular, the mere fact that a component of a complex mark for which protection is sought is covered by a disclaimer does not justify the automatic exclusion of that component from the assessment or any failure to give consideration to the perception of the public in the assessment of the role which that component plays in the determination of the overall impression created by the mark or of the mark’s distinctive character. In my view, the requirement that elements such as those at issue remain free for use can in no way justify any alteration of those rules, which could lead to the registration of signs capable of creating a likelihood of confusion. The interest which economic operators have in being free to use indications or signs which describe the goods or services they market is sufficiently well protected, first of all, by the provisions of Directive 2008/95 on the absolute impediments to registration and by the provisions which limit the effects of trade marks, which I have mentioned, (50) secondly, by the fact that the rights conferred by Article 5(1)(b) of Directive 2008/95 do not permit the proprietor of a complex mark to seek protection of just one of the components of that mark and, lastly, by the rules which govern the assessment of the likelihood of confusion, in accordance with which the likelihood of confusion must be determined having regard, in particular, to the distinctive and dominant components of the conflicting signs and the distinctive character of the mark for which protection is sought.
Conclusion
51. On the basis of all the foregoing considerations, I propose that the Court should answer the questions referred by the Svea hovrätt (Svea Court of Appeal, Stockholm, Sweden) as follows:
Article 4(1)(b) 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 must be interpreted as meaning that the existence of a waiver, or disclaimer, such as that at issue in the case in the main proceedings, relating to one of the elements which comprise an earlier mark, has no bearing on the assessment of the likelihood of confusion between that earlier mark and a later sign for which registration as a trade mark is sought.