Opinion of the Advocate General — ECLI:EU:C:2011:258
Date: 2011-04-14
Language of the case: Dutch
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary of the Judgment Approximation of laws – Trade marks – Directive 89/104 – Right, for the proprietor of a trade mark, to prevent the use by a third party of an identical or similar sign for identical or similar goods or services – Use of the trade mark for the purposes of Article 5(1)(b) of the directive – Meaning (Council Directive 89/104, Art. 5(1)(b)) Article 5(1)(b) of First Directive 89/104 relating to trade marks must be interpreted as meaning that a service provider who, under an order from and on the instructions of another person, fills packaging which was supplied to it by the other person who, in advance, affixed to it a sign which is identical with, or similar to, a sign protected as a trade mark does not itself make use of the sign that is liable to be prohibited under that provision. Inasmuch as such a service provider enables its customers to make use of signs similar to trade marks, its role cannot be assessed under Directive 89/104 but must be examined, if necessary, from the point of view of other rules of law. Furthermore, the finding that a trade mark proprietor cannot act, solely on the basis of Directive 89/104, against a service provider does not have the consequence of allowing the customer of that service provider to circumvent the protection given to the proprietor by that directive, by dividing the production process and by awarding different elements of the process to service providers. Those services may be attributed to the customer who therefore remains liable under that directive. (see paras 35-37, operative part)