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

Profession:Herbert Smith

The question of whether "added matter" can be discounted so as to bring a sign within the scope of Section 10(1) of the Trade Marks Act 1994 (Article 5(1)(a) Directive 89/104/EEC) has been hotly debated in this country since Jacob J's decision in British Sugar v James Robertson & Sons (the Treat case). The Advocate General's Opinion in January last year suggested that the term "identical" in Section 10(1) be interpreted strictly. The ECJ gave its decision on 20 March 2003. Background Article 4(1)(a) of the Trade Marks Directive provides that a trade mark cannot be registered if it is identical with an earlier trade mark and the goods or services in respect of which the application has been made are identical to the goods or services for which the earlier trade mark has been registered. Similarly, Article 5(1)(a) states that the use in the course of trade of a sign which is identical to a registered trade mark for goods or services identical to those in respect of which the mark has been registered will be an infringement of the trade mark owner's exclusive rights. These provisions were implemented in the UK as Sections 5(1) and 10(1) of the Trade Marks Act ("TMA"). This case concerned LTJ Diffusion, a French company which produces and sells clothing under the name "Arthur". "Arthur" is registered as a figurative trade mark in distinctive handwritten form in France for clothing. SADAS operate a mail order business selling clothing for children including under the name "Arthur et Félice". That name is registered by SADAS as a word mark in France, and the form in which it was used did not reproduce the handwritten script of the LTJ Diffusion mark. LTJ Diffusion objected to SADAS's use of their mark before the Tribunal de Grande Instance in reliance of the provision of the provision of the French Intellectual Property Code which corresponds to Article 5(1)(a). (It had opposed successfully the registration in France of the mark "Arthur et Nina" by another company.) Decision of the ECJ In a short judgment, the ECJ stated that the criterion of identity of the sign and the trade mark under Article 5(1)(a) of the Directive (or Section 10(1) of the TMA) must be given a strict interpretation. These provisions will only assist the trade mark owner if the allegedly infringing sign reproduces all the elements of the trade mark "without any modification or addition". Identity between the sign and the mark must be assessed globally with respect to the average, reasonably...

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