LTJ Diffusion SA v Sadas Vertbaudet SA (ARTHUR and ARTHUR ET FELICIE)

Date

20 March 2003

Legislation

Directive 89/104, Article 5(1); Trade Marks Act 1994, ss.10(1), 10(2)

Keywords

trade mark infringement; identicality of mark and sign

Counsel

F. Fajgenbaum, A. Bertrand

Solicitors

Unknown

Judge

G.C. Rodríguez Iglesias, President, M. Wathelet and R. Schintgen (Presidents of Chambers), C. Gulmann, P. Jann, F. Macken (Rapporteur), N. Colneric, S. von Bahr and J.N. Cunha Rodrigues, Judges; Advocate General: F.G. Jacobs.

Court

European Court of Justice

Reported

[2003] ETMR 83; [2003] FSR 34

Summary

LTJ Diffusion's business was the manufacture and distribution of clothing and footwear. It owned a French trade mark in Class 25 for textile articles including shoes. The mark consisted of the single word, ARTHUR, in the form of a handwritten signature with the characters joined up and a dot between the two sloping sides of the letter A.

Sadas was a company operating a mail-order business, which marketed children's clothing and accessories and was the proprietor of a French trade mark also in Class 25. That trade mark, which was filed in the form of upright printed capital letters, was the following:

ARTHUR ET FÉLICIE

In the context of an infringement action the French court referred a question to the ECJ concerning the question of whether the two marks were identical for the purposes of Article 5(1)(a) of Directive 89/104 (the equivalent sections of the 1994 Act is ss.10(1)/10(2)).

The ECJ held that protection for the proprietor of a trade mark is guaranteed by Article 5 of the directive, which provides that the proprietor is to be entitled, within certain limits, to prevent all third parties from using his trade mark in the course of trade.

Decision

• the criterion of identity of the sign and the trade mark must be interpreted strictly and implies that the two elements compared should be the same in all respects;
• there is therefore identity between the sign and the trade mark where the former reproduces, without any modification or addition, all the elements constituting the latter;
• there is therefore identity between the sign and the trade mark where the former reproduces, without any modification or addition, all the elements constituting the latter;
• however, the perception of identity between the sign and the trade mark must be assessed globally with respect to an average consumer who is deemed to be reasonably well informed, reasonably observant and circumspect. The sign produces an overall impression on such a consumer. That consumer only rarely has the chance to make a direct comparison between signs and trade marks and must place his trust in the imperfect picture of them that he has kept in his mind;
• since the perception of identity between the sign and the trade mark is not the result of a direct comparison of all the characteristics of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by an average consumer; so
• in conclusion a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.
• It can be seen from this judgment that the criterion of identicality for the purposes of civil infringement must be interpreted very strictly. This case is the authoritative statement of the law in this area and supersedes the various UK decisions where they touch on this topic such as Origins Natural Resources Inc v Origin Clothing Ltd and British Sugar Plc v James Robertson & Sons Limited.