Opinion of the Advocate General — ECLI:EU:C:2022:481
Date: 2022-06-16
Language of the case: Polish
Subject matter: Free movement of goods;Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Poland

Summary C-175/21–1 
Case C-175/21 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
17 March 2021 
Referring court: 
Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) 
Date of the decision to refer: 
3 February 2021 
Applicant: 
Harman International Industries, Inc. 
Defendant: 
AB SA 
  
Subject matter of the case in the main proceedings 
Claims for infringement of exclusive rights to EU trade marks 
Subject matter and legal basis of the reference 
Interpretation of Article 15(1) of Regulation 2017/1001, read in conjunction with 
the second sentence of Article 19(1) TEU and in conjunction with the second 
sentence of Article 36 TFEU, in the context of the compatibility with those 
provisions of the case-law of national courts in cases concerning infringement of 
EU trade marks – Article 267 TFEU 
Question referred 
Must the second sentence of Article 36 TFEU, read in conjunction with 
Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of 
the Council of 14 June 2017 on the European Union trade mark, and in 
conjunction with the second sentence of Article 19(1) of the Treaty on European 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-175/21 
 
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Union, be interpreted as precluding the practice of the national courts of the 
Member States, which is that the courts: 
- when upholding claims by right holders to prohibit the importation, putting 
on the market, offering, advertising of goods bearing the EU trade mark, to 
order their withdrawal from the market or to order their destruction; 
- when ruling, in proceedings to secure claims, on the seizure of goods 
bearing the EU trade mark, 
refer in their rulings to ‘goods which have not been put on the market within the 
European Economic Area by the right holder or with his consent’, with the result 
that it is left to the enforcement authority, in view of the general wording of the 
ruling, to determine which items bearing the EU trade mark are subject to the 
injunctions and prohibitions granted (that is to say, which items have not been put 
on the market within the European Economic Area by the right holder or with his 
consent), while the possibility of challenging the aforementioned findings of the 
enforcement authority before a court in declaratory proceedings is excluded or 
limited by the nature of the legal remedies available to the defendant in 
proceedings to secure claims and in enforcement proceedings? 
Provisions of EU law relied on 
Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of 
the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, 
p. 1) 
Article 36 of the Treaty on the Functioning of the European Union (TFEU) 
Second sentence of Article 19(1) of the Treaty on European Union 
Article 8 of Directive 2004/48/EC of the European Parliament and of the Council 
of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 
L 157, p. 45). 
Provisions of national law relied on 
Ustawa z dnia 17 listopada 1964 r. – Kodeks postępowania cywilnego (Law of 
17 November 1964 – Code of Civil Procedure, consolidated text: Dziennik Ustaw 
[Journal of Laws] of 2019, item 1640, as amended, ‘the CCP’) – Article 325, 
Article 758, Article 759(1), Article 767(1), (2), (4) and (5), Article 777(1)(1), 
Article 803, Article 840(1)(1) and (2), Article 843(2) and (3), Article 1050(1) and 
(3) and Article 1051(1) 
HARMAN INTERNATIONAL INDUSTRIES 
 
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Succinct presentation of the facts and procedure in the main proceedings 
1 Harman International Industries, Inc., based in Stamford (United States), which is 
the applicant in the main proceedings, is the holder of exclusive rights to the EU 
trade marks registered under numbers 001830967, 005336755, 015577621, 
003191004, 003860665, 0150221652, 001782523, 005133251 and 009097494. 
2 The applicant’s products (audiovisual equipment, including speakers, headphones 
and audio systems) bearing the indicated trade marks are distributed in the 
territory of Poland by a single entity with which the applicant concluded a 
distribution agreement and through which the applicant’s products are sold in 
electronic equipment shops to end customers. 
3 The applicant uses marking systems for its products. On the basis of those 
markings, it is not always possible to determine whether the product in question 
was intended by the applicant to be sold in the European Economic Area (EEA) 
market or not, because the markings on some of the items bearing the applicant’s 
trade marks do not specify the place where the goods were to be first placed on the 
market with the applicant’s consent, in the absence of abbreviations relating to 
territories. Therefore, some of the markings on the packaging are present both on 
the packaging of items intended to be placed on the market within the EEA and on 
the packaging of items intended to be placed on the market outside the EEA. In 
order to determine the market for which those items were intended, it is necessary 
to use an IT tool at the applicant’s disposal, which includes a database of products 
together with an indication of the market for which a specific item was intended. 
4 AB SA, based in Magnice (Poland), which is the defendant in the main 
proceedings, engages in the business of electronic equipment distribution. The 
defendant put on the Polish market goods produced by the applicant and marked 
by it with its EU trade marks. The defendant purchased the indicated goods from a 
seller other than the distributor of the products for the Polish market with whom 
the applicant had concluded an agreement. The defendant received assurances 
from that seller that putting the products in question on the Polish market did not 
infringe the applicant’s exclusive rights to EU trade marks in view of the 
exhaustion of those rights resulting from the prior putting of products bearing EU 
trade marks on the market within the EEA by the applicant or with his consent. 
5 The applicant requests that the referring court prohibit the defendant from 
infringing the applicant’s rights to EU trade marks by prohibiting the importation, 
putting on the market, offering, advertising and stocking of speakers and 
headphones and their packaging bearing any of the applicant’s EU trade marks 
which have not previously been put on the market within the EEA by the applicant 
or with his consent. The applicant further requests that the court order the 
defendant to withdraw from the market or destroy such speakers and headphones 
and their packaging. 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-175/21 
 
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Succinct presentation of the reasons for the reference 
6 It is very difficult for a defendant to prove in the context of litigation that a 
particular item was put on the market in the EEA by the applicant or with his 
consent. Although the defendant may approach his seller, he will not be able to 
obtain information from whom the items in question were purchased, as sellers do 
not want to disclose their sources of supply so as not to lose buyers. 
7 In the practice of the Polish courts, the wording ‘goods bearing the applicant’s 
trade marks which have not previously been put on the market within the [EEA] 
by the applicant (the holder of rights under the EU trade mark) or with his 
consent’ is used in the operative parts of rulings upholding applicants’ claims in 
cases such as the one before the referring court. Court rulings ordering the 
disclosure of information on the origin and distribution networks of the goods 
concerned under national legislation implementing Article 8 of Directive 2004/48, 
and ordering provisional measures, for instance the seizure of such goods, are also 
drafted in a similar manner. 
8 All the aforementioned rulings, as writs of enforcement, constitute the basis for 
enforcement action. In practice, this manner of drafting rulings gives rise to 
serious doubts when those rulings are enforced. For example, an injunction 
granted prior to the commencement of the main proceedings before the referring 
court was enforced by way of the applicant seizing all the goods bearing its trade 
marks which were in the defendant’s possession. Ultimately, the applicant 
identified to the enforcement authority those items which had been introduced into 
the EEA by the applicant, that is to say, in respect of which the exclusive right 
under the trade mark had been exhausted. Thus, the content of the court’s ruling 
was supplemented by the applicant’s statement at the enforcement stage, since the 
content of the court’s ruling did not in itself make it possible to determine the 
items that should be seized, and the enforcement authority relied in effect on the 
creditor’s statement. 
9 In other proceedings before the referring court, a ruling was given in which the 
referring court ordered the defendant to provide information on the distribution 
networks of the devices in the defendant’s possession bearing the applicant’s EU 
trade marks which had not been introduced into the EEA by the applicant or with 
his consent. In an order interpreting that ruling, the court ordered the defendant to 
provide the bailiff with all the serial numbers of the indicated devices and ordered 
the applicant to make available to the bailiff a database by means of which the 
bailiff was to verify whether a certain item had been put on the market within the 
EEA by the applicant or with his consent. That ruling was amended by an order of 
the Sąd Apelacyjny w Warszawie (Court of Appeal, Warsaw, Poland), which held 
that the wording of the ruling, which included the phrase ‘goods which have not 
been put on the market within the [EEA] by the applicant with his consent’, in 
effect left it to the defendant to assess which devices in the defendant’s possession 
had been put on the market within the EEA by the applicant or with his consent. 
HARMAN INTERNATIONAL INDUSTRIES 
 
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Consequently, the defendant was entitled to respond to the applicant that it did not 
have in its possession any goods covered by the indicated phrase. 
10 Thus the manner in which rulings are drafted leads to radically different 
enforcement practices, ranging from enforcement against all items bearing the 
applicant’s trade marks which are in the defendant’s possession (irrespective of 
whether the applicant’s right under the trade mark has been exhausted in relation 
to those items) to refusing to grant the applicant legal protection and leaving it to 
the defendant to assess which items bearing the applicant’s trade mark in the 
defendant’s possession have been put on the market within the EEA by the 
applicant or with his consent. At the same time, this way of drafting rulings raises 
doubts from the point of view of national law, as court decisions on parties’ 
claims should be formulated in such a manner as to enable the decisions to be 
implemented on the basis of the content of the operative part alone, without the 
need to refer to the grounds of the ruling or to take further steps. In the view of the 
referring court, the inclusion in rulings of prohibitions or orders which contain the 
wording in question means, in essence, that the court’s ruling reproduces the 
wording of the legal provisions on which it is based, but does not give concrete 
expression to the obligation arising from those provisions for a party to the 
proceedings. 
11 The applicant argues that this manner of drafting rulings is justified, even if it 
results in the temporary seizure of goods that should not be subject to seizure due 
to the exhaustion of the right under the trade mark, since the defendant, by 
infringing the applicant’s trade mark rights, should expect certain inconveniences 
resulting from the enforcement proceedings. 
12 The referring court has doubts about this reasoning. Indeed, its acceptance allows 
situations where, on the basis of a ruling by a national court of a Member State, 
goods will be seized whose free movement within the EEA is lawful and, 
moreover, such a seizure will occur despite the absence of an infringement of the 
exclusive right conferred by the trade mark. Thus, the applicant’s position 
essentially implies that a sanction could be imposed on the defendant (in the form 
of seizure of the goods in his possession) merely because the defendant deals in 
goods bearing the applicant’s trade mark without the applicant’s consent, even 
though such consent is not required due to the exhaustion of rights. 
13 Under the second sentence of Article 19(1) TEU, Member States are to provide 
remedies sufficient to ensure effective legal protection in the fields covered by 
Union law. Such fields include the free movement of goods as well as the 
exhaustion of rights to an EU trade mark, which is a concept supporting that free 
movement. The exhaustion of rights is regional in nature and its purpose is to 
ensure the free movement within the EEA of items bearing a trade mark which 
have been put on the market in the designated area by the right holder or with his 
consent. 
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14 According to the referring court, there are doubts as to whether, in view of the 
aforementioned wording of court rulings, judicial protection of the free movement 
of goods is ensured in cases concerning the protection of an EU trade mark. The 
source of doubt is the system of remedies existing under national law to which the 
debtor is entitled in enforcement proceedings against writs of enforcement (court 
rulings) issued in cases of infringement of an exclusive right to an EU trade mark. 
Those remedies, their basic characteristics and the practice of their application are 
described below. 
15 A temporary injunction (securing a claim by way of seizure of items) is 
enforceable by a bailiff. Where a bailiff seizes goods, the debtor (defendant) has 
the right to lodge a complaint concerning the bailiff’s actions with a district court 
(that is to say, such complaints are not examined by intellectual property divisions 
of regional courts). A complaint concerning a bailiff’s actions is a legal remedy 
aimed at remedying irregularities in the bailiff’s actions consisting in enforcement 
proceedings being conducted in a manner contrary to the rules of civil procedure. 
It is therefore not a remedy which would allow the substantive grounds of the 
creditor’s claim to be verified. As a result, where a complaint is lodged against a 
bailiff’s actions, this does not make it possible to determine whether the item in 
question has been introduced into the EEA by the right holder or with his consent. 
16 The ineffectiveness of this remedy in situations where the right holder seizes all 
goods bearing the EU trade mark (and not only those which have not been 
previously put on the market within the EEA by the right holder or with his 
consent) is also confirmed by practice. For example, in one such case, after 
hearing the defendant’s complaint against a bailiff’s actions, the court instructed 
the bailiff concerned to consult a patent lawyer. In his written opinion, the patent 
lawyer indicated that only the applicant (the right holder) could indicate which 
items should be subject to seizure. In practice, therefore, it is the right holder (in 
cooperation with the bailiff) who freely indicates the items that should be subject 
to seizure, and his statement is not subject to verification by a court, since a 
complaint against a bailiff’s actions does not allow for such verification. 
17 Similar doubts arise at the stage of enforcement of a judgment prohibiting the 
defendant, inter alia, from importing and marketing the goods bearing the 
applicant’s trade mark which have not previously been put on the market within 
the EEA by the applicant or with his consent. Such a judgment is subject to 
enforcement by the court as the enforcement authority under Article 1051 of the 
CCP, which provides that the court, at the creditor’s request, after hearing the 
parties and finding that the debtor has failed to comply with his obligations, 
imposes a fine on the debtor. This provision expressly provides only for the 
parties to be heard and not for the court to take evidence. Hence in enforcement 
proceedings the court as the enforcement authority determines whether the goods 
in question are subject to the prohibition solely on the basis of the parties’ 
statements made at the hearing. 
HARMAN INTERNATIONAL INDUSTRIES 
 
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18 Even if the court, as the enforcement authority, were entitled to take evidence in 
this respect, it would have to rely exclusively on the evidence presented by the 
creditor (that is, the IT tools used by the creditor) and the statements made on that 
basis, since the identification by the defendant of successive sellers and buyers of 
the items in question will encounter the same difficulties in enforcement 
proceedings as in declaratory proceedings (see paragraph 6 above). 
19 The same considerations apply to the enforcement of a judgment ordering the 
withdrawal from the market or destruction of the items in question. In this case, 
enforcement proceedings are conducted by the court pursuant to Article 1050 of 
the CCP, which, unlike Article 1051 of the CCP, does not require the enforcement 
court to find that the debtor has not complied with the court’s ruling. As a 
consequence, the pleas raised by the debtor with respect to the performance of the 
obligation covered by the writ of enforcement are not be examined, which means 
that the debtor is not able to defend itself with the plea that the exclusive right 
conferred by the EU trade mark has been exhausted with regard to the indicated 
items. 
20 In the view of the referring court, the debtor’s right to lodge an objection to 
enforcement is also excluded in this situation. Conditions for lodging such an 
objection include, inter alia, the occurrence of an event as a result of which an 
obligation established by a judgment is extinguished or may no longer be 
enforced, and in certain cases the performance of an obligation and a plea of set-
off. On the other hand, an objection to enforcement cannot be used to clarify the 
content of the judgment which constitutes the writ of enforcement. Otherwise, the 
lodging of such an objection would result in declaratory proceedings being 
initiated once again. 
21 Moreover, the requirements for the debtor in connection with the lodging of an 
objection to enforcement are important here. When bringing an action for 
enforcement, the debtor should set out all the pleas it intends to raise, on pain of 
losing the right to raise them later in the proceedings. In a situation in which all 
determinations as to the goods in question are possible on the basis of the 
evidence and tools at the exclusive disposal of the right holder (creditor), this 
requirement constitutes a significant obstacle for the debtor, because at the stage 
of bringing an action for enforcement, the debtor is not in a position to indicate 
which items subject to enforcement are affected by the plea of exhaustion of the 
right under the trade mark. 
22 Consequently, in view of the legal remedies available, enforcement proceedings or 
proceedings to secure claims relating to the injunctions or prohibitions in question 
do not provide instruments which would eliminate the risk of those injunctions or 
prohibitions being applied to items in respect of which the exclusive right 
conferred by the trade mark has been exhausted. This means that the judicial 
protection of the free movement of goods may be limited by the aforementioned 
manner in which rulings are drafted. 
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23 This risk could be removed by drafting the judgments in a precise manner so that 
it is not necessary to determine in the course of enforcement proceedings which 
items in the debtor’s possession bearing the creditor’s trade mark have not been 
put on the market within the EEA by the right holder or with his consent. This 
could be ensured by a precise reference in the ruling to, for instance, the markings 
or serial numbers of the items bearing the trade marks to which the prohibitions or 
injunctions apply. With regard to the goods in the defendant’s possession as at the 
date of the ruling, formulation of the claim (and consequently of the court’s 
judgment) in this manner should not present any difficulties. Additionally, in 
relation to goods bearing the applicant’s trade mark which come into the 
defendant’s possession after the date of the ruling, the protection of the free 
movement of goods would also require that they can be unambiguously identified 
as introduced (or not introduced) into the EEA by the right holder or with his 
consent.