Opinion of the Advocate General — ECLI:EU:C:2005:318
Date: 2005-05-26
Language of the case: Dutch
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary of the Judgment 1. Community trade mark – Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and of Directive 89/104 – Rights conferred by a trade mark – Right to prohibit importing or exporting of goods bearing the mark – Meaning of ‘importing’ – Entry under the external transit procedure or the customs warehousing procedure of original goods bearing the mark not having already been previously put on the market in the Community by the proprietor or with his consent – Right of prohibition of the proprietor – Not included – Right of the proprietor to make the placing under those customs procedures conditional on the existence of a final destination already specified in a third country – Not included (Council Regulation No 40/94, Art. 9(1) and (2)(c); Council Directive 89/104, Art. 5(1) and (3)(c)) 2. Community trade mark – Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and of Directive 89/104 – Rights conferred by a trade mark – Right to prohibit offering and putting on the market of goods bearing the mark – Meaning of ‘offering’ and ‘putting on the market’ – Conditions – Original goods bearing the mark having the customs status of non-Community goods and placed under the external transit procedure or the customs warehousing procedure (Council Regulation No 40/94, Art. 9(2)(b); Council Directive 89/104, Art. 5(3)(b)) 3. Community trade mark – Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and of Directive 89/104 – Rights conferred by a trade mark – Right to prohibit importing, exporting, offering and putting on the market of the mark – Onus of proof (Council Regulation No 40/94, Art. 9(1) and (2)(b) and (c); Council Directive 89/104, Art. 5(1) and 3(b) and (c)) 1. Article 5(1) and (3)(c) of First Directive 89/104 on trade marks and Article 9(1) and (2)(c) of Regulation No 40/94 on the Community trade mark must be interpreted as meaning that a trade mark proprietor cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the Community previously by that proprietor or with his consent. The trade mark proprietor cannot make the placing of the goods at issue under the external transit procedure or the customs warehousing procedure conditional on the existence, at the time of the introduction of those goods into the Community, of a final destination already specified in a third country, possibly pursuant to a sale agreement. ‘Importing’ within the meaning of those provisions, which the trade mark proprietor may oppose in so far as it entails ‘using [the mark] in the course of trade’ within the meaning of Article 5(1) of the Directive and Article 9(1) of the Regulation, requires introduction of those goods into the Community for the purposes of putting them on the market therein. The putting on the market of goods coming from a third country is subject to their release for free circulation, which is only one of the options open to the trader who brings goods into the Community customs territory. As long as that option is not chosen and the requirements of the customs-approved treatment or use, other than release for free circulation, under which the goods have been placed are satisfied, the mere physical introduction of those goods into the territory of the Community is not ‘importing’ within the meaning of the provisions cited above. (see paras 34-35, 43-44, 50, operative part 1) 2. ‘Offering’ and ‘putting on the market’ the goods, within the meaning of Article 5(3)(b) of First Directive 89/104 on trade marks and Article 9(2)(b) of Regulation No 40/94 on the Community trade mark, may include, respectively, the offering and sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done and/or the sale is effected while the goods are placed under the external transit procedure or the customs warehousing procedure. The trade mark proprietor may oppose the offering or the sale of such goods when it necessarily entails the putting of those goods on the market in the Community. (see para. 61, operative part 2) 3. When a trade mark proprietor pleads interference with the exclusive rights conferred on it by Article 5(1) of First Directive 89/104 on trade marks and Article 9(1) of Regulation 40/94 on the Community trade mark, that interference involving either the release for free circulation or the offering or sale of the goods which necessarily entails putting on the market in the Community goods bearing the trade mark and having the customs status of non-Community goods, it is for that proprietor to prove those facts which give grounds for exercising the right of prohibition provided for in Article 5(3)(b) and (c) of the directive and Article 9(2)(b) and (c) of the regulation. (see paras 70, 75, operative part 3)