Opinion of the Advocate General — ECLI:EU:C:2006:680
Date: 2006-10-26
Language of the case: German
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: Austria

summary examination of the documents submitted by the party concerned to make sure, in particular, that the mark appears in the national register in the applicant’s name and for the products and services indicated on the form; it also checks the applicant’s particulars and confirms that he has completed the formalities correctly and submitted the relevant documents. (30) 62. Once it has received the file, the International Bureau checks only the procedural aspects and payment of the fees in accordance with the Madrid Agreement and its Implementing Regulations. (31) If the conditions are satisfied, an entry will be made in the international register. However, the International Bureau does not assess whether the mark which is the subject of the application deserves the protection of the contracting countries named; it is for those countries to make that evaluation (32) within a maximum period of one year from the date of registration. (33) 63. In short, international registration means that the obligation to effect registration in each country in which protection of the mark is sought is replaced by a single application to the International Bureau in Geneva, which provides the proprietors of those industrial property rights with the appropriate means of protecting themselves against unlawful attacks from unfair competitors or practised infringers beyond their borders. 64. In order to decide the question referred for a preliminary ruling, it is necessary to determine the date of international registration. 65. Article 3(4) of the Madrid Agreement introduces a scheme of subsidiary alternatives to determine the date of registration, which is: (a) as a general rule, the date on which the application is lodged with the International Bureau; (b) in exceptional circumstances, brought forward to the date on which the application is received at the relevant Office in the country of origin, if that office forwards it to the International Bureau within two months; and (c) if there are irregularities, when all the defects in the international application have been corrected. (34) 66. It may be inferred from the above not only that the obligation to use the mark remains at the mercy of national legislation – although, in the European Community, it has been partially harmonised as described above – but also that, from the date of international registration, the mark enjoys protection, although subject to expiry of a period of one year granted to the contracting States designated in each form to refuse the protection sought in their territory, which shows that, also in respect of this kind of industrial property right, the date of registration and the date on which full ownership begins cannot be expected to coincide. Furthermore, as registration of the protected sign at the International Bureau ‘replaces’, to use the terminology of Article 4bis of the Madrid Agreement, national registration, and there is therefore, strictly speaking, no registration of the international mark at the national offices, which are merely notified, the only reliable way of establishing the completion of the international registration procedure would be to recognise it as being the date of registration at the Bureau. 67. That time coincides with the beginning of the grace period in respect of the obligation to use the mark, in accordance with the Directive. The obvious determination of the international legislation to approximate both dates, the national and the international, also supports the solution which I support, since acceptance of the suggestions put forward in the observations lodged in these preliminary ruling proceedings, which propose that the period should start to run only when there is no longer interference with the protection, would lead to a regrettable variation in the time at which the countdown for the obligation to use the mark begins: at times it would depend on national provisions, especially where relative grounds for refusing registration are accepted, at others it would depend on the resolution of those claims by third parties against the international marks, which would postpone the period in question until heaven knows when. 68. It is also necessary to highlight the essential role of the date of international registration, (35) since it is crucial for calculating the period within which the contracting countries must give notice of refusal, (36) for the beginning of the effects of registration (37) or of the request for territorial extension, (38) for its duration and independence (39) and for its renewal. (40) Since it is a reference point in so many respects, it is logical that it should also occupy that position with regard to the start of the obligation to use the mark. 69. As regards the unusual situation arising if a State which is a party to the Madrid Agreement refuses registration of a mark which has been filed at the International Bureau, two points need to be made: first, regarding the absolute grounds for refusal, since in the system introduced by that Agreement they are considered unlikely, having been examined in the country of origin of the mark, and in accordance with the unification of the criteria in the Paris Convention; secondly, regarding the relative grounds for refusal, in respect of which it is assumed that undertakings will have acted diligently since, before seeking international registration, they are able to ascertain, at no great cost, which marks are likely to oppose their own in the States in which they seek protection for their marks. 70. I am therefore convinced that, also for international marks, ‘the date of the completion of the registration’ overlaps with the date recorded in the International Bureau in Geneva. 71. In the light of the foregoing arguments, I suggest that the Court answer the first question referred for a preliminary ruling by the Oberster Patent- und Markensenat that the term ‘date of the completion of the registration procedure’ in Article 10(1) of Directive 89/104 does not refer to the start of the period of protection, with which it may coincide, but to the time at which the competent authority, in accordance with national legislation, or the International Bureau in the case of an international mark, completes the registration procedure. 2. Interpretation of Article 12(1) of Directive 89/104 72. Closely related to the obligation to use the mark is revocation, which is different in that the period may begin at any time, without any connection with the completion of a procedure. If the proprietor of the mark fails to use it for more than five years, competitors and interested third parties are given the option of lawfully appropriating the sign. In any case, both legal structures, like two oxen under the same yoke, are pulling the same legislative objective: to match the situation in the register to the situation in the market, as has already been pointed out. 73. The referring Court asks about the reasons likely to justify non-use of a trade mark during the time stipulated by the Community provision. In the main proceedings, Lidl claims that there were ‘bureaucratic obstacles’ incompatible with its corporate strategy, which consisted in selling its products with the mark ‘Le Chef DE CUISINE’ exclusively in its own business premises, the opening of which was delayed rather longer than planned. 74. In the light of my proposal for the first question, in relation to trade mark legislation in Austria, it is not necessary to answer the second question for a decision in the main proceedings. However, in case the Court of Justice disagrees with that view and deems it necessary to interpret Article 12 of the Directive, I shall briefly set out a few ideas. 75. I do not agree with the Republic of Austria that this question is inadmissible, since the context is not generic nor does the statement of facts lack sufficient references to establish the interest in and need for a ruling. 76. The Court of Justice has already ruled on Article 12(1), specifically on the meaning of ‘genuine use’, stating that there is genuine use of a trade mark ‘where the mark is used in accordance with its essential function … in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark’. (41) When assessing whether use of the trade mark is genuine, regard must be had to ‘all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark in the course of trade is real, particularly whether such use is viewed as warranted in the economic sector concerned’. (42) 77. Consequently, any use of a mark which does not comply with those requirements is not covered by that definition. I have already suggested that private use that does not extend beyond the internal province of the proprietor’s undertaking does not count, in so far as it is not directed at securing a place in the market. Preparations for the marketing of goods or services do not, therefore, constitute ‘sufficient’ or ‘effective’ use, nor does getting them shop-ready or storing them where they do not leave the undertaking’s premises. (43) 78. However, the provision being considered refers to possible reasons justifying non-use, but gives no example. Article 19 of TRIPS is very helpful on this point: it states that circumstances arising independently of the will of the owner of the trade mark which constitute an obstacle to the use of the trademark, indicating archetypes such as import restrictions or other government requirements for goods or services protected by the trademark, are to be recognized as valid reasons for non-use. 79. The ‘bureaucratic obstacles’ put forward by Lidl in the main proceedings, although not falling within the free will of the owner of the sign, must have a direct relationship with the mark so much so that its use depends on the completion of the administrative procedure. Accordingly, it may have had pending the grant of a permit by a public health registry for the foodstuffs sold under the name ‘Le Chef DE CUISINE’ or, in the case of a medicine, authorisation by the competent national health authorities. But complications arising out of delays in acquiring building permits for commercial premises are not related sufficiently closely to the mark. Nor is it easy to understand what prevented Lidl from changing its business strategy in good time; for example, it could have designed a licensing system for the distribution of products for a limited time with other suppliers of foodstuffs or with grocery stores. 80. Likewise, as the Commission rightly points out, tactics in business are entirely within the decision-making power of the company, so it is difficult to accept that possible obstacles cannot be avoided by adapting those tactics to vicissitudes and setbacks. In this case, the doubt therefore arises as to which line of conduct has constituted the greater obstacle to attainment of the objective pursued: the intransigent parts of the administrative procedure or the stubborn adherence to an unsuitable plan. However, these investigations, which are of a factual nature, are for the national court, which is better acquainted with the facts and responsible for deciding the main action. 81. In the light of the foregoing considerations, I suggest that the Court of Justice decide the second question referred for a preliminary ruling by interpreting Article 12(1) of Directive 89/104/EEC as meaning that the reasons justifying non-use of the mark must arise independently of the will of the proprietor of the trade mark and constitute an obstacle to the use of the sign. When they satisfy those two conditions bureaucratic procedures fall within that category of exemption, which is not the case when they impede the implementation of a business strategy, since the undertaking retains its decision-making power to adapt the strategy according to administrative vicissitudes. It is for the national court to weigh up the facts in the light of these suggestions. VI – Conclusion 82. In the light of all the foregoing considerations, I propose that the Court of Justice give the following answer to the questions referred for a preliminary ruling by the Oberster Patent- und Markensenat: (1) The term ‘date of the completion of the registration procedure’ in Article 10(1) of Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks does not refer to the start of the period of protection, with which it may coincide, but to the time at which the competent authority, in accordance with national legislation, or the International Bureau in the case of an international mark, completes the registration procedure. (2) Article 12(1) of Directive 89/104/EEC is to be interpreted as meaning that the reasons justifying non-use of the mark must arise independently of the will of the proprietor of the trade mark and constitute an obstacle to the use of the sign. When they satisfy those two conditions bureaucratic procedures fall within that category of exemption, which is not the case when they impede the implementation of a business strategy, since the undertaking retains its decision-making power to adapt the strategy according to administrative vicissitudes. It is for the national court to weigh up the facts in the light of these suggestions. 1 – Original language: Spanish. 2 – First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (O J 1989 L 40, p. 1). 3 – Markenschutzgesetz 1970, BGB1. 260/1970, last amendment in BGB1. I 151/2005. 4 – Signed in the French capital on 20 March 1883, as last revised at Stockholm on 14 July 1967 and amended on 28 September 1979. 5 – Approved in the capital of Spain on 14April 1891,as revisedat Stockholm on 14 July 1967,and as amended on 28 September 1979. 6 – Multilateral negotiations of the Uruguay Round (1986-1994) – Marrakesh Agreement establishing the World Trade Organisation, concluded in Marrakesh, Morocco, on 15 April 1994 – Annex 1C – Trade – Agreement on Trade-related Aspects of Intellectual Property Rights (WTO) (OJ 1994 L 336, p. 214). 7 – Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. 8 – In French in the original text. 9 – Opinion of 28 June 2001 in Case C-17/00 De Coster [2001] ECR I-9445. 10 – Points 83 et seq. of the Opinion cited in footnote 9. 11 – Point 89 of the Opinion in De Coster. 12 – Opinion delivered in Case C-259/04 Emanuel [2006] ECR I-3089, paragraph 26. 13 – Case C-516/99 Schmid [2002] ECR I-4573, with the opinion of Advocate General Tizzano; and Case C-53/03 Syfait and Others [2005] ECR I-4609, which held that the reference made by the Greek Competition Commission (Epitropi Antagonismou) was inadmissible on the grounds that, since it was subject to the supervision of the Greek Ministry of Development, it was not independent. 14 – ‘Weisungsfreie Kollegialbehörde mit richterlichem Einschlag’ in German. 15 – Judgments in Case C-44/96 Mannesmann Anlagebau Austria and Others [1998] ECR I-73, in connection with the ‘Bundesvergabeamt’ (Federal Procurement Office); Case C-103/97 Köllensperger and Atzwanger [1999] ECR I-551, concerning the ‘Tiroler Landesvergabeamt’ (Procurement Office of the Land of Tyrol); and Case C-92/00 HI [2002] ECR I-5553, regarding the ‘Vergabekontrollsenat des Landes Wien’ (Public Procurement Review Chamber of the Vienna Region); in those judgments the Court acknowledged that those bodies were entitled to have recourse to the judicial cooperation system under Article 234 EC. However, it did not reach the same conclusion in respect of the ‘Berufungssenat der Finanzlandesdirektion für Wien, Niedrösterreich und Burgenland’ (Appeal Chamber of the regional finance authority for Vienna, Niederösterreich and Burgenland) in Schmid, cited above, paragraphs 36 to 44. 16 – BGB1. No 259/1970, last amended by BGB1 I No 96/2006. 17 – Case 102/81 Nordsee [1982] ECR 1095, paragraph 7 et seq. 18 – Article 133 of the Austrian Federal Constitutional Law settles the question of whether the Supreme Administrative Court (‘Verwaltungsgerichtshof’) has jurisdiction to decide cases on the same matters as the referring court, a doubt arising out of its powers to register or grant trade mark rights. Academic lawyers have criticised this complex way of allocating powers to different judicial bodies within the same branch of the law; see Beetz, R., ‘Article 39’ in the joint work Markenschutz – Systematischer Kommentar zum Markenschutzgesetz, edited by Guido Kucsko, Manzsche Verlags- und Universitätsbuchhandlung, Vienna, 2006, p. 660. 19 – It should be noted, as I suggest in the Opinion in De Coster, that in order for a body to make a reference under Article 234 EC, the fact that it acts at final instance is crucial since, as the body concerned is not part of the Austrian judicial system, the fact that no appeal lies against its decisions, except the inadequate option of challenging them before the Federal Constitutional Court, entitles it to have recourse to the preliminary ruling procedure. 20 – In Case C-111/94 Job Centre [1995] ECR I-3361, paragraph 9, the definition is held not to apply to non-contentious proceedings; in Case C-182/00 Lutz and Others [2002] ECR I-547, paragraphs 15 and 16, to the maintenance of a register of companies by the German courts; and, in Case C-178/99 Doris Salzmann [2001] ECR I-4421, to the keeping of a land register by certain Austrian courts. 21 – Case C-54/96 Dorsch Consult Ingenieursgesellschaft [1997] ECR I-4961, paragraph 23, and the case-law cited therein; and Schmid, cited above, paragraph 34. 22 – Hackenberg, W./Stix-Hackl, Ch., Handbuch zum Verfahren vor dem Europäischen Gerichtshof, 2nd ed., Vienna, 2000, p. 120; also Beetz, R., op. cit., p. 664, states categorically that the Oberster Patent- und Markensenat must be regarded as a court or tribunal for the purposes of Article 234 EC. 23 – The possibility of confusion in German law is pointed out by Bous, U., ‘§ 25 Ausschluß von Ansprüchen bei mangelnder Benutzung’, in Ekey, F.L. and Klippel, D., Heidelberger Kommentar zum Markenrecht, Ed. C.F. Müller, Heidelberg, 2003, p. 370. 24 – Fezer, K.-H., Markenrecht, Ed. C.H. Beck, 3rd ed., Munich, 2001, p. 1191. 25 – My Opinion in Case C-40/01 Ansul [2003] ECR I-2439, point 42. Likewise, paragraph 36 of the judgment. 26 – Fernández-Nóvoa, C., Tratado sobre Derecho de marcas, Ed. Marcial Pons, Madrid, 2001, p. 454. 27 – From now on, I shall refer only to the Madrid Agreement, not to its Protocol, which was also signed in the capital of Spain on 27 June 1989 and which, in spite of its title, is a new international treaty, although very similar in content to the Agreement. The second of these treaties won over a few countries which criticised the Agreement for inflexibility, in that it did not allow for the possibility that applications for trade marks lodged at the national offices could be entered in the international register. The Protocol came into force on 1 December 1995. Fezer, K.-H., op. cit., p. 2027 et seq. 28 – As laid down in Article 4(1) of the Madrid Agreement. 29 – Article 3(1) of the Madrid Agreement. 30 – A more detailed description is contained in Botana Agra, J.M., ‘Las marcas internacionales’, in Navarro Chinchilla, J.J. and Vázquez García, R.J. (Coordinators), Estudios sobre marcas, Ed. Comares, Granada, 1995, p. 37 et seq. 31 – There are now Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol relating to that Agreement (text in force since 1 April 2004); it may be consulted on http://www.wipo.int/madrid/en/legal_texts/common_regulations.htm. 32 – Article 5(1) of the Madrid Agreement. 33 – Article 5(2) of the Madrid Agreement. 34 – Rule 15 of the Implementing Regulations. 35 – This fundamental aspect is pointed out by Botana Agra, J.M., Op. cit., p. 38 et seq. 36 – Article 5(2) of the Madrid Agreement. 37 – Article 4(1) of the Madrid Agreement. 38 – Article 3(2) of the Madrid Agreement. 39 – Article 6(2) of the Madrid Agreement. 40 – Article 7 of the Madrid Agreement. 41 – Judgment in Case C-40/01 Ansul, cited above, paragraph 43. 42 – Ibid. 43 – Opinion in Ansul, cited above, point 57.