Art 5(1)(a)/(b)/(2) TMD

Question 1

Art 5(1)(a) TMD

Answer 1

The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

any sign which is identical with the trade mark;
in relation to goods or services which are identical with those for which the trade mark is registered

Question 2

Art 5(1)(b) TMD

Answer 2

The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

any sign where, because of its similarity to the trade mark; and similarity of the goods or services covered;
there exists a likelihood of confusion (incl. association)

Question 3

Art 5(2) TMD

Answer 3

Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

any sign which is identical or similar to the trade mark in relation to goods or services which are not similar (or similar);
where the latter has a reputation in the Member State; and
where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Question 4

Additional requirement to infringement

Answer 4

Arsenal v Reed: Must be liable to affect (adversely affect) the functions of the TM ‘in particular the essential function’

= Limited infringement under Art 5(1) (extra criterion)
= A broader range under 5(1) natural given no likelihood of confusion requirement, explains wider functions.
= Art 5(1) (cf Art 5(2)) benefit to the user is irrelevant - focus on harm to the mark.