I. Facts of the Case
On 29 June 1995, the German Federal Court of Justice (Bundesgerichtshof) referred a request for a preliminary ruling to the Court of Justice concerning the interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC on trade marks. The question was raised in proceedings between the Dutch company SABEL BV and the German company Puma AG, Rudolf Dassler Sport, concerning an application for registration in Germany of trade mark IR 540 894 for goods in Class 18 (leather and imitations of leather, and goods made of these materials; bags and handbags) and Class 25 (clothing, including hosiery, belts, scarves, ties and braces; footwear; headgear).The Bundesgerichtshof sought clarification as to the importance to be attached to the semantic content of the trade marks, in the present case, the figure of a “leaping cat”, in the assessment of the likelihood of confusion, having regard to the wording of Article 4(1)(b), according to which the likelihood of confusion “includes the likelihood of association with the earlier trade mark”.
II. Assessment of the Court
Article 4(1)(b) of the Directive does not apply where there is no likelihood of confusion on the part of the public. In that regard, it is clear from the tenth recital in the preamble to the Directive that the assessment of the likelihood of confusion “depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association which can be made with the used or registered sign, and on the degree of similarity between the trade mark and the sign and between the goods or services identified”. The likelihood of confusion must therefore be assessed globally, taking into account all factors relevant to the circumstances of the case.The perception of the trade marks by the average consumer of the category of goods or services concerned plays a decisive role in the global assessment of the likelihood of confusion.Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 must be interpreted as meaning that the mere association which the public might make between two trade marks as a result of a similarity in their semantic content is not, in itself, sufficient to conclude that there is a likelihood of confusion within the meaning of that provision.
