May account be taken, when assessing the similarity of the goods or services covered by the two marks, of the distinctive character, in particular the reputation, of the mark with earlier priority (on the date which determines the seniority of the later mark), so that, in particular, likelihood of confusion within the meaning of Article 4(1)(b) of Directive 89/104/EEC must be taken to exist even if the public attributes the goods and/or services to different places of origin ('Herkunftsstätten')?

The court affirmed that the distinctive character and reputation of an earlier trade mark must be considered when assessing the likelihood of confusion. Confusion might still exist even if the public perceives different places of production, provided they might believe the goods/services come from the same or economically linked undertakings.

Distinctive character and reputation affect likelihood of confusion under Directive 89/104/EEC Article 4(1)(b).

European Court of Justice · Judgment

Judgment of the Court of 29 September 1998. - Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., formerly Pathe Communications Corporation. - Reference for a preliminary ruling: Bundesgerichtshof - Germany. - Trade mark law - Likelihood of confusion - Similarity of goods or services. - Case C-39/97.

Rechtsvraag

The central legal question is whether the distinctive character and reputation of an earlier trademark must be considered when assessing the likelihood of confusion due to the similarity between the goods or services covered by two trademarks under Article 4(1)(b) of Directive 89/104/EEC.

Regel

Art. 4(1)(b), Directive 89/104/EEC (Refusal of trademark registration when there is a likelihood of confusion due to similarity with an earlier trademark and the goods or services covered)
Art. 2, Directive 89/104/EEC (A trademark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings)

Conclusie

The court concluded that the distinctive character and reputation of an earlier trademark must be taken into account when assessing the likelihood of confusion under Article 4(1)(b) of Directive 89/104/EEC. Even when the public perceives goods or services as having different places of production, a likelihood of confusion may exist if there is a belief that they originate from the same or economically-linked undertakings.

Tijdlijn

1986 Metro-Goldwyn-Mayer Inc. applied in Germany for registration of the word trademark 'CANNON' for films and related services.
Unknown (after 1986) Canon Kabushiki Kaisha opposed MGM's application for the 'CANNON' trademark, claiming it infringed their earlier 'Canon' trademark.
Unknown (after opposition) The first examiner of the German Patent Office refused MGM's trademark registration on the grounds that the marks were analogous.
Unknown (after refusal) The second examiner set aside the refusal decision and dismissed Canon's opposition due to lack of similarity.
Unknown (after dismissal) The Bundespatentgericht upheld the decision to dismiss Canon's opposition, stating there was no similarity between the goods or services.
Unknown (after Bundespatentgericht decision) Canon Kabushiki Kaisha appealed the Bundespatentgericht's decision to the Bundesgerichtshof.
12-12-1996 The Bundesgerichtshof referred a question to the European Court of Justice regarding the interpretation of Article 4(1)(b) of Directive 89/104/EEC.
28-01-1997 The Court of Justice of the European Union received the reference for a preliminary ruling from the Bundesgerichtshof.
20-01-1998 The Court of Justice of the European Union held an oral hearing involving the parties and several governments.
02-04-1998 The Advocate General delivered their opinion on the case at a sitting of the Court.
29-09-1998 The Court of Justice of the European Union delivered its judgment, interpreting Article 4(1)(b) of Directive 89/104/EEC.