When is a sign identical to a registered trade mark? - The Advocate General's Opinion in LTJ Diffusion v. SADAS



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

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

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

The Advocate General's Opinion

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

Article 5(1)(a) of the Directive (or Section 10(1) of the TMA) will only assist the trade mark owner if his mark has been reproduced without any addition, omission or modification other than those which are either minute or wholly insignificant. In assessing this, the court must make a global assessment of the features of the mark and the sign and the overall impression created by them, in particular by...

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