ECJ 1 Preliminary rulings – Jurisdiction of the Court – Limits – Presentation during the procedure before the Court of facts which differ from those described in the order for reference – Obligation of the Court to abide by the facts as stated in the order for reference
(EC Treaty, Art. 177; EC Statute of the Court of Justice, Art. 20)
2 Free movement of goods – Exceptions – Existence of directives for approximation – Effects – Trade mark protected by national law where the product is put on the market in a Member State by the trade mark owner or with his consent – Assessment in the light of Directive 89/104
(EC Treaty, Arts 30 and 36; Council Directive 89/104, Art. 7)
3 Acts of the institutions – Directives – Implementation by the Member States – Need to ensure the effectiveness of directives – Obligations of national courts
4 Approximation of laws – Trade marks – Directive 89/104 – Product from a non-member country put on the market in a Member State by the trade mark owner or with his consent – Lawful acquisition by an independent trader – Importation, without processing or changing the packaging, into another Member State – Trade mark rights in both Member States held by the same group – Opposition to importation by the trade mark owner – Not permissible, by reason of the principle of exhaustion of trade mark rights
(EC Treaty, Arts 30 and 36; Council Directive 89/104, Art. 7(1) and (2))
5 In answering a question referred to it for a preliminary ruling, the Court cannot base its ruling on facts mentioned in the course of the proceedings which differ from those in the order for reference. If it did so, it would have to address a question of principle which it has not yet had occasion to decide, on the basis of facts which required clarification to enable a proper answer to be given. Moreover, where the question referred raises an important point on the extent of the rights which a trade mark owner may derive from the mark, and the owner, not being a party to the main proceedings, cannot put his arguments to the Court, there are specific reasons why the Court should not depart from the facts as stated in the order for reference. In any event, to alter the substance of questions referred for a preliminary ruling would be incompatible with the Court’s function under Article 177 of the Treaty and with its duty to ensure that the Governments of the Member States and the parties concerned are given the opportunity to submit observations under Article 20 of the Statute of the Court, bearing in mind that, under that provision, only the order of the referring court is notified to the interested parties.
6 Article 7 of the First Trade Mark Directive 89/104 is worded in general terms and comprehensively regulates the question of the exhaustion of trade mark rights for products traded in the Community, so that national rules on the point must be assessed in relation to that provision and not Articles 30 and 36 of the Treaty, it being understood, however, that, like any secondary legislation, the directive itself must be interpreted in the light of the Treaty rules, in this case those on the free movement of goods.
7 When applying national law, whether adopted before or after a directive, the national court which has to interpret that law must do so, as far as possible, in the light of the wording and the purpose of the directive so as to achieve the result which the directive has in view.
8 Article 7 of the First Trade Mark Directive 89/104, which is framed in terms corresponding to those used by the Court in judgments which, in interpreting Articles 30 and 36 of the Treaty, have recognized in Community law the principle of exhaustion of the rights conferred by a trade mark, must be interpreted as precluding application in one Member State of a national rule under which the owner of a trade mark may prevent importation of a product protected by the mark where
– the product has been manufactured in a non-member country,
– it has been imported into a second Member State by the owner of the mark or by another company in the same group as the owner of the mark,
– it has been lawfully acquired in the second Member State by an independent trader, who has exported it to the first Member State,
– it has not been processed and the packaging has not been changed, apart from the addition to the label of certain information to comply with the requirements of the legislation of the Member State of import, and
– the trade mark rights are held in both Member States by the same group.
First, the principle of exhaustion laid down in Article 7 applies where the owner of the trade mark in the State of import and the owner of the mark in the State of export, although different persons, are economically linked, for example as subsidiaries of the same group. Second, it is of no importance whether or not the product protected by the mark has been manufactured in a non-member country if it has in any event been lawfully put on the market, in the Member State from which it has been imported, by the owner of the mark or with the owner’s consent, including marketing by another company in the same group as the owner. Finally, the mere addition on the label of information of the kind described above cannot constitute a legitimate reason for the trade mark owner to oppose the further commercialization of the products within the meaning of Article 7(2) of the directive, provided that the label so altered does not omit important information or give inaccurate information and its presentation is not liable to damage the reputation of the trade mark and that of its owner.
Citations:
[1997] ECR I-1729, C-352/95, [1997] EUECJ C-352/95
Links:
Cited by:
Cited – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 03 June 2022; Ref: scu.161717