Opinion of Advocate General Tesauro delivered on 9 June 1993

1 Original language: Italian.

2 As may be seen from the fourth recital, the directive docs not deprive the Member States of the right to continue to protect trade marks acquired through use; it deals with such marks only as far as concerns their relationship to trade marks acquired by re gistration obtained according to the provisions harmonized by the directive.

3 See the judgment in Case 251/78 Denkami [1979] ECR 3369.

4 Sec the judgment in Case 119/75 Terrapin v Terranova [1976] ECR 1039.

5 Sec the judgment in Case 144/81 Keitrkoop v Nancy Kean Gifts [1982] ECR 2853.

6 See the judgments in Case 35/87 Thetford Corporation v Fiamma [1988] ECR 3585 and in Case 24/67 Parke, Davis & Co. [1968] ECR 75. In the same sense, on the subject of trade marks, see the judgments in Case 16/74 De Peijper [1974] ECR 1183 and in Terrapin, previously cited. Still on the same subject reference may be made to the formula enunciated in the Keurkoop judgment, and repeated in the Thetford judgment, in Case 53/87 CICRA v Renault [1988] ECR 6039 and in Case 238/87 Volvo [1988] ECR 6211, according to which, in the absence of unification or approximation of laws by the Community, it is for national legislation to lay down the conditions and arrangements for protection of the rights in question.

7 Sec the judgments in Thetford, previously cited, paragraphs 17 and 18 of the grounds of judgment; and in CĪCRA, previously cited, paragraph 12 of the grounds of judgment.

8 The fact that that is the point of view adopted by the BGH seems to be confirmed by the opinion annexed to AUDI's observations, in which it is stated that 1c Bundesgerichtshof confirme qu'en toute hypothèse, si on part de l'idée que le terme Quattro a une valeur forte comme marque, il faut répondre par l'affirmative à la question de savoir s'il y a un risque de confusion avec Quadra.

9 Sec the judgment in Case C-10/89 HAG GF AG [1990] ECR I-3711.

10 In his Opinion — in paragraphs 48 and 49 — Advocate General Jacobs emphasizes that an unduly broad view of the concept of confusingly similar marks — apart from not being justified in that case within the meaning of the first sentence of Article 36 — would run counter to the second sentence of that decision, since reliance on a trade mark in order to exclude goods manufactured in another Member State where the risk of confusion between the two marks is minimal would amount, if allowed by national courts, to a disguised restriction on trade between Member States.