Opinion of the Advocate General — ECLI:EU:C:1997:539
Date: 1997-11-13
Language of the case: Dutch
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: External relations;Trade marks;Commercial policy;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary of the Judgment
1. Preliminary rulings — Jurisdiction of the Court — Interpretation of an international agree­
ment concluded by the Community and having a bearing on the application by national
courts of Community provisions — Agreement on Trade-Related Aspects of Intellectual Prop­
erty Rights (TRIPs)
(EC Treaty, Art. 177; TRIPs Agreement, Art. 50; Council Regulation No 40/94, Art. 99)
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SUMMARY — CASE C-53/96
2. International agreements — Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPs) — 'Provisional Measure' — Definition — National measure falling within the
scope of that definition
(TRIPs Agreement, Art. 50)
1. The Court has jurisdiction, in the context
of the procedure under Article 177 of the
Treaty, to interpret Article 50 of the
Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPs), as
set out in Annex 1 C to the Agreement
establishing the World Trade Organisa­
tion (WTO), approved on behalf of the
Community, as regards matters within its
competence, in Decision 94/800.
Article 50(1) of the TRIPs Agreement
requires that judicial authorities of the
contracting parties be authorised to order
'provisional measures' to protect the
interests of proprietors of trade-mark
rights conferred under the laws of those
parties and under Article 99 of Regu­
lation No 40/94 on the Community trade
mark, in force when the WTO Agree­
ment was signed, rights arising from a
Community trade mark may be safe­
guarded by the adoption of 'provisional,
including protective, measures'. Although
it is true that the measures envisaged by
Article 99 and the relevant procedural
rules are those provided for by the
domestic law of the Member State con­
cerned for the purposes of the national
trade mark, since the Community is a
party to the TRIPs Agreement and since
that Agreement applies to the Commu­
nity trade mark, the courts referred to in
Article 99 of Regulation No 40/94, when
called upon to apply national rules with a
view to ordering provisional measures for
the protection of rights arising under a
Community trade mark, are required to
do so, as far as possible, in the light of the
wording and purpose of Article 50 of the
TRIPs Agreement.
2. A measure whose purpose is to put an
end to alleged infringements of a trade­
mark right and which is adopted in the
course of a procedure distinguished by
the following features:
— the measure is characterised under
national law as an 'immediate provi-
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HERMES v FHT
sional measure' and its adoption must
be required 'on grounds of urgency',
— the opposing party is summoned and
is heard if he appears before the
Court,
— the decision adopting the measure is
reasoned and given in writing follow­
ing an assessment of the substance of
the case by the judge hearing the
interim application,
— an appeal may be lodged against the
decision, and
— although the parties remain free to
initiate proceedings on the merits of
the case, the decision is usually
accepted by the parties as a 'final'
resolution of their dispute,
is to be regarded as a 'provisional meas­
ure' within the meaning of Article 50 of
the Agreement on Trade-Related Aspects
of Intellectual Property Rights, as set out
in Annex 1 C of the agreement establish­
ing the World Trade Organisation,
approved on behalf of the Community, as
regards matters within its competence, in
Decision 94/800, since that article applies
to 'prompt and effective' measures whose
purpose is to 'prevent an infringement of
any intellectual property rights from
occurring'.
Having regard to its characterisation
under national law, the reason for its
adoption and the fact that it is not
regarded as definitive in law, such a meas­
ure meets the definition in Article 50 of
the TRIPs Agreement and the other char­
acteristics of that order cannot affect that
conclusion.
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