Opinion of the Advocate General — ECLI:EU:C:1998:160
Date: 1998-04-02
Language of the case: Dutch
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary of the Judgment
1. Approximation of laws — Trade marks — Directive 89/104 — Application of national tran­
sitional rules pre-dating transposition of the directive into national law — Whether permis­
sible — Conditions
(Council Directive 89/104, Art. 5(4))
2. Approximation of laws — Trade marks — Directive 89/104 — Scope of Articles 5(1) and 2(5)
respectively
(Council Directive 89/104, Arts 5(1), 2 and 5)
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SUMMARY — CASE C-63/97
3. Approximation of laws — Trade marks — Directive 89/104 — Product placed on the market
in a Member State by the proprietor or with his consent — Use of the trade mark within the
meaning of Article 5(1)(a) of the directive — Meaning — Information conveyed to the public
by another undertaking concerning the sale or repair and maintenance of products covered by
the mark — Covered
(Council Directive 89/104, Art. 5(1)(a))
4. Approximation of laws — Trade marks — Directive 89/104 — Product placed on the market
in a Member State by the proprietor or with his consent — Where the proprietor of the trade
mark contests its use by a third party for advertising purposes in relation to the sale, repair
and maintenance of the products covered by the mark — Not permissible — Exception — Risk
of confusion between the third undertaking and the proprietor of the trade mark
(Council Directive 89/104, Arts 5 to 7)
1. Subject to the duty of the national court
to interpret national law as far as possible
in conformity with Community law, it is
not contrary to the latter for a transitional
rule of national law to provide that an
appeal against a decision given before the
date on which the rules transposing the
First Directive 89/104 to approximate the
laws of the Member States relating to trade
marks into national law were belatedly
brought into force is to be decided in
accordance with the rules applicable before
that date, even where judgment is given
after that date.
Although Article 5(4) of the directive seeks
to limit the effects in time of the new
national rules transposing the directive,
the directive does not make provision for
determining the national law applicable in
situations other than those referred to in
that provision. Accordingly, the national
courts must, in applying the rules of
national law, including the transitional
rules, interpret national law so far as is
possible in the light of the wording and
purpose of the directive.
2. The scope of application of Article 5(1)
and (2) of the First Directive 89/104 to
approximate the laws of the Member States
relating to trade marks, on the one hand,
and Article 5(5), on the other, depends on
whether the trade mark is used for the
purpose of distinguishing the goods or
services in question as originating from a
particular undertaking, that is to say, as a
trade mark as such, or whether it is used
for other purposes.
3. The use of a trade mark, without the pro­
prietor's authorisation, for the purpose of
informing the public that another under­
taking carries out the repair and mainte­
nance of goods covered by that mark or
that it has specialised or is a specialist in
such goods constitutes use of the mark
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BMW AND BMW NEDERLAND v DEENIK
within the meaning of Article 5(1)(a) of
the First Directive 89/104 to approximate
the laws of the Member States relating to
trade marks, since the mark is used to
identify the source of the goods in respect
of which the services are supplied, and
thus to distinguish those goods from any
others in respect of which the same ser­
vices might have been provided.
It is only when assessing the legality of
the use of a mark in situations covered by
Article 5(2) or (5) of the First Directive
89/104, and not when classifying its use
under Article 5 thereof, that the question
arises whether use of the mark takes unfair
advantage of, or is detrimental to, the dis­
tinctive character or the repute of the trade
mark by, for example, giving the public a
false impression of the relationship between
the advertiser and the trade mark owner.
4. Articles 5 to 7 of the First Directive 89/104
to approximate the laws of the Member
States relating to trade marks do not entitle
the proprietor of a trade mark to prohibit
a third party from using the mark for the
purpose of informing the public that he
carries out the repair and maintenance of
goods covered by that trade mark and put
on the market under that mark by the
proprietor or with his consent, or that he
has specialised or is a specialist in the sale
or the repair and maintenance of such
goods, unless the mark is used in a way
that may create the impression that there
is a commercial connection between the
other undertaking and the trade mark pro­
prietor, and in particular that the reseller's
business is affiliated to the trade mark
proprietor's distribution network or that
there is a special relationship between the
two undertakings.
First, as regards use of a trade mark to
inform the public of the resale of products
covered, such an informative use of a mark
is necessary to guarantee the right of resale
under Article 7 of the directive and does
not take unfair advantage of the distinc­
tive character or repute of that trade mark.
The mere fact that the reseller derives an
advantage from using the trade mark in
that advertisements for the sale of goods
covered by the mark, which are in other
respects honest and fair, lend an aura of
quality to his own business does not con­
stitute a legitimate reason within the
meaning of Article 7(2) of the directive.
Secondly, as regards use of a trade mark to
advertise to the public the repair and main­
tenance of products covered, such a use
does not constitute further commercialisa­
tion for the purposes of Article 7 of the
directive, but use indicating the intended
purpose of the service within the meaning
of Article 6(1)(c) thereof, which is legiti­
mate provided that the use is necessary to
indicate that purpose and is in accordance
with honest practices in industrial or com-
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SUMMARY — CASE C-63/97
mercial matters. In that regard, the condi­
tion requiring use of the trade mark to be
made in accordance with honest practices
in industrial or commercial matters con­
stitutes in substance the expression of a
duty to act fairly in relation to the legiti­
mate interests of the trade mark owner,
similar to that imposed on the reseller
where he uses another's trade mark to
advertise the resale of products covered by
that mark.
Just like Article 7 of the directive, Article
6 seeks to reconcile the fundamental inter­
ests of trade mark protection with those
of free movement of goods and freedom
to provide services in the common market
in such a way that trade mark rights are
able to fulfil their essential role in the
system of undistorted competition which
the Treaty seeks to establish and maintain.
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