Opinion of the Advocate General — ECLI:EU:C:2023:653
Date: 2023-09-07
Language of the case: Spanish
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Spain

Translation C-361/22 – 1 
Case C-361/22 
Request for a preliminary ruling 
Date lodged: 
3 June 2022 
Referring court: 
Tribunal Supremo (Spain) 
Date of the decision to refer: 
12 May 2022 
Appellant: 
Industria de Diseño Textil, S. A. (Inditex) 
Respondent: 
Boungiorno Myalert, S. A. 
  
[…] [internal procedural matters] 
TRIBUNAL SUPREMO (SUPREME COURT) 
Civil Chamber 
ORDER 
[…] 
[composition of the Court] 
 
Madrid, 12 May 2022. 
Appeal […] lodged against the judgment of the Audiencia Provincial de Madrid 
(Provincial Court, Madrid) (Section 28) of 18 May 2018, […] 
[…] 
[details of the parties and internal procedural matters] 
EN 
REQUEST FOR A PRELIMINARY RULING OF 12. 5. 2022 – CASE C-361/22 
 
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FACTS 
ONE. Proceedings giving rise to the reference for a preliminary ruling 
1. Boungiorno is a company which, in 2010, provided information services via 
the internet and mobile telephony. At that time it launched an advertising 
campaign for subscription to a multimedia messaging service which it marketed 
under the name ‘Club Blinko’, as part of which it offered free entry into a draw in 
which the prize was a ZARA gift card for EUR 1 000. 
2. Inditex brought an action against Boungiorno over its use of the ‘Zara’ sign 
in the advertising campaigns. In its claim, it brought actions for trade mark 
infringement on the grounds that Boungiorno had infringed the exclusive rights of 
the Zara trade mark pursuant to both Article 34(2)(b) of the Ley de Marcas (Trade 
Mark Law; ‘the LM’), on grounds of likelihood of confusion, and Article 34(2)(c) 
of the LM, on grounds of taking advantage of the reputation of the trade mark and 
damaging that reputation. 
Boungiorno denied that Inditex’s rights … over the ZARA trade mark had been 
infringed, since the specific use made of the sign did not constitute use as a trade 
mark but was instead a referential use, which was included amongst the lawful 
uses of third-party distinctive signs provided for in Article 37 of the LM. 
Specifically, the ZARA trade mark was used as an example of one of the gifts 
offered to winners of the prize draw held for subscribers to the multimedia 
messaging service offered by the defendant. 
TWO. Resolution of the dispute at first and second instance 
1. The court of first instance dismissed the claim. First it explained why the 
defendant’s use of the ZARA trade mark was not a descriptive use for the 
purposes of Article 37 of the LM, which establishes the scope of trade mark 
rights. It then went on to examine the requirements under Article 34[(2)](b) and 
(c) of the LM which must be met in order for a trade mark infringement to occur, 
and concluded that the use made by the defendant did not infringe the trade mark, 
there was no likelihood of confusion, no damage to the trade mark’s reputation 
and no unfair advantage taken of that reputation. 
2. Inditex appealed against the judgment at first instance. In relation to trade 
mark actions, the appeal focused on the existence of a trade mark infringement by 
virtue of the special protection conferred by Article 34(2)(c) of the LM on trade 
marks which have a reputation. The Provincial Court dismissed the appeal on the 
grounds that the use of the ZARA trade mark did not damage the trade mark’s 
reputation and no unfair advantage had been taken of that reputation. 
THREE. Reference for a preliminary ruling 
1. Following the judgment on appeal, Inditex brought an appeal on a point of 
law before this Supreme Court. 
INDITEX 
 
3 
2. Once the appeal had been ruled admissible, […] the parties were invited to 
submit arguments on whether a reference should be made to the Court of Justice 
of the European Union for a preliminary ruling on the interpretation of 
Article 6(1)(c) of Directive 89/104/EC: 
‘In the event that the ground of appeal founded on infringement of 
Article 34(2)(c) of the LM should succeed, making it necessary to review whether 
the limitation of the effects of the trade mark established in Article 37(c) of the 
LM applied … [procedural wording]’. 
3. Both Inditex and Boungiorno opposed the reference for a preliminary ruling, 
albeit for different, and to some extent contradictory, reasons. 
LEGAL BASIS 
ONE. […] [introductory wording] 
Boungiorno is a company which, in 2010, provided information services via the 
internet and mobile telephony. It owned the websites www.blinco.es and 
www.blinkogold.es, on which it offered services and downloads of entertainment 
content for mobile phones through its WAP and SMS services. 
At that time it launched an advertising campaign for subscription to a multimedia 
messaging service which it marketed under the name ‘Club Blinko’, as part of 
which it offered free entry into a draw in which the prize was a ZARA gift card 
for EUR 1 000. Specifically, it stated: 
‘Subscribe to Club Blinko and enter this fantastic draw now to win 1 000 euros in 
cash. I’d like to spend it on: a 1 000 euro ZARA gift card. Your mobile number 
for a chance to win your card.’  
On the screen that appeared after clicking on the banner, the ZARA sign was, in 
all cases, prominently displayed and shown in a rectangle, reminiscent of the 
design used on cards usually issued by banks, large stores and other commercial 
entities. 
Participation in the draw was conditional on a paid subscription to the service for 
a minimum period of 30 days, as stated in the information provided at the bottom 
of the screen, which also referred to the service provider and its terms and 
conditions. It was possible to subscribe to the service via the same screen. 
TWO. In response to the actions for infringement of the trade mark with a 
reputation, ‘Zara’, Boungiorno argued that its use of the mark constituted a 
referential use to explain what gift new subscribers would receive, and that this 
referential use fell within the legal limitations on trade mark rights established by 
Article 37 of the LM. 
REQUEST FOR A PRELIMINARY RULING OF 12. 5. 2022 – CASE C-361/22 
 
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Article 37 of the LM provides a list of limitations on trade mark rights; these are 
circumstances in which a trade mark will not entitle its proprietor to prevent a 
third party from using the mark in the course of trade. The wording of the original 
version of the provision was as follows: 
‘Article 37. Limitation of trade mark rights 
The rights conferred by a trade mark shall not entitle its proprietor to prevent third 
parties from use of the following in the course of trade, providing that such use is 
in accordance with honest practices in industrial or commercial matters: 
(a) his own name or address; b) indications concerning the kind, quality, 
quantity, intended purpose, value, geographical origin, the time of production of 
goods or of rendering of the service, or other characteristics of goods or services; 
(c) the trade mark, where it is necessary to indicate the intended purpose of a 
product or service, in particular as accessories or spare parts.’ 
In this case, the defence relied on was that under subparagraph (c). 
This provision implemented Article 6(1)(c) of Directive 89/104/EC, which 
provided as follows: 
‘1. The trade mark shall not entitle the proprietor to prohibit a third party from 
using, in the course of trade: 
[…] 
(c) the trade mark where it is necessary to indicate the intended purpose of a 
product or service, in particular as accessories or spare parts; provided he uses 
them in accordance with honest practices in industrial or commercial matters.’ 
As far as present purposes are concerned, the subsequent Directive 2008/95/EC of 
22 October 2008 did not substantively alter the wording of Article 6(1)(c). 
THREE. Directive (EU) 2015/2436 of 16 December 2015 altered the wording of 
the equivalent provision that now governs limitations on the effects of a trade 
mark. Specifically, Article 141(c) provides as follows: 
‘1. A trade mark shall not entitle the proprietor to prohibit a third party from 
using, in the course of trade: 
[…] 
(c) the trade mark for the purpose of identifying or referring to goods or 
services as those of the proprietor of that trade mark, in particular, where the use 
of the trade mark is necessary to indicate the intended purpose of a product or 
service, in particular as accessories or spare parts.’ 
INDITEX 
 
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This provision was transposed by Royal Decree Law 23/2018 of 21 December 
2018, which amended of Article 37(1)(c) of the LM to provide as follows: 
‘Article 37. Limitation of the effects of a trade mark 
1. A trade mark shall not entitle the proprietor to prohibit a third party from 
using, in the course of trade: 
[…]  
(c) the trade mark for the purpose of identifying or referring to goods or 
services as those of the proprietor of that trade mark, in particular, where the use 
of the trade mark is necessary to indicate the intended purpose of a product or 
service, in particular as accessories or spare parts. 
2. Paragraph 1 shall apply only where the use made by the third party is in 
accordance with honest practices in industrial or commercial matters.’ 
FOUR. Directive (EU) 2015/2436, in governing the exception for referential use 
established in Article 14(1)(c), has added an further element to the original 
wording of Article 6(1)(c) of the directive. 
In the original wording of Article 6(1)(c) of Directive 89/104/EC, the limitation 
on the trade mark constituted by referential use applied: 
‘where it is necessary to indicate the intended purpose of a product or service, in 
particular as accessories or spare parts’. 
Now, Article 14(1)(c) of Directive (EU) 2015/2436 inserts another, broader, 
provision before this one: 
Use of ‘the trade mark for the purpose of identifying or referring to goods or 
services as those of the proprietor of that trade mark, in particular, where the use 
of the trade mark is necessary to indicate the intended purpose of a product or 
service, in particular as accessories or spare parts’. 
In view of the use of the expression ‘in particular’, which links the more general 
conduct (identifying or referring to goods or services as those of the proprietor of 
that trade mark), which was not previously included, to the more specific conduct, 
which was included (where the use of the trade mark is necessary to indicate the 
intended purpose of a product or service, in particular as accessories or spare 
parts), doubt arises as to the scope of the additional provision included in 
Article 14(1)(c) of Directive (EU) 2015/2436. 
That doubt is: does it make explicit something which was to be understood as 
implicitly included in Article 6(1)(c) of Directive 89/104/EC, or does it extend the 
scope of the referential uses which fall within this limitation on trade mark rights? 
REQUEST FOR A PRELIMINARY RULING OF 12. 5. 2022 – CASE C-361/22 
 
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FIVE. That doubt is highlighted by the interpretation of Article 6(1)(c) of 
Directive 89/104/EC given by the Court of Justice in its judgments of 17 March 
2005, Gillette (C-228/03, EU:C:2005:177), and of 8 July 2010, Portakabin 
(C-558/08, EU:C:2010:416): 
‘63. As the Court has already ruled, the intended purpose of products “as 
accessories or spare parts” was cited by the legislature only by way of example, 
that being the usual situation in which it is necessary to use a trade mark in order 
to indicate the intended purpose of a product. The application of Article 6(1)(c) of 
Directive 89/104 is therefore not limited to that situation (Gillette Company and 
Gillette Group Finland, paragraph 32). 
64. The situations coming within the scope of Article 6(1)(c) must, however, be 
limited to those which correspond to the objective of that provision. However, as 
Portakabin and the Commission have correctly observed, the objective of 
Article 6(1)(c) of Directive 89/104 is to enable providers of goods or services, 
which are supplementary to the goods or services offered by a trade mark 
proprietor, to use that mark in order to inform the public of the practical link 
between their goods or services and those of the proprietor of the mark (see, to 
that effect, Gillette Company and Gillette Group Finland, paragraphs 33 and 34).’ 
It might seem that the Court of Justice was restricting the scope of this limitation 
to the use needed in order to indicate a product’s intended purpose. Above all 
when it explains that the purpose of the provision (Article 6(1)(c) of Directive 
89/104/EC) is ‘to enable providers of goods or services, which are supplementary 
to the goods or services offered by a trade mark proprietor, to use that mark in 
order to inform the public of the practical link between their goods or services and 
those of the proprietor of the mark’. 
SIX. The answer to the question referred for a preliminary ruling affects the 
outcome of the present case. If the Supreme Court upholds the ground of appeal 
relating to the interpretation and application of the provision which confers special 
protection on trade marks with a reputation, it would have to examine whether 
Boungiorno’s use of the ‘Zara’ trade mark could be regarded as constituting a 
referential use which falls outside the ius prohibendi which the trade mark confers 
on its proprietor, on the grounds that it falls within the limitation under 
Article 37(c) of the original Trade Marks Law (equivalent to Article 6(1)(c) of 
Directive 89/104/EC), which, for reasons of time, is the applicable provision in 
the appeal proceedings. 
And, when the Supreme Court makes that assessment, Boungiorno’s conduct 
might fall more clearly within the scope of the current wording of Article 14(1)(c) 
of Directive (EU) 2015/2436 than within that of Article 6(1)(c) of Directive 
89/104/EC.  
OPERATIVE PART 
 
INDITEX 
 
7 
ORDER OF THE COURT: 
Having regard to the above, this Chamber orders that the following question be 
referred to the Court of Justice of the European Union for a preliminary ruling: 
Must Article 6(1)(c) of Directive 89/104/EC be interpreted as implicitly including 
within the limitation on trade mark rights the more general conduct now referred 
to in Article 14(1)(c) of Directive (EU) 2015/2436, namely the use of ‘the trade 
mark for the purpose of identifying or referring to goods or services as those of 
the proprietor of that trade mark’? 
[…] 
[closing procedural wording and judges’ signatures]