Judgment — ECLI:EU:C:2015:497
Date: 2015-07-16
Language of the case: Dutch
Court formation: Third Chamber
Subject matter: Intellectual, industrial and commercial property;Approximation of laws;Patents
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary — Judgment of the Court (Third Chamber), 16 July 2015 1. 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 — Using the trade mark within the meaning of Article 5(1) of the directive — Definition — Delivery to a warehousekeeper by an operator who is not the proprietor of a mark, with a view to releasing them on the market, goods bearing that mark — Included (Council Directive 89/104, Art. 5(1)(a)) 2. Approximation of laws — Trade marks — Directive 89/104 — Right of the proprietor of a registered trade mark to contest its unlawful use — Sign identical with or similar to the trade mark — Use in the course of trade — Definition — Use during the importation and storage of goods by an economic operator active in parallel trade — Included (Council Directive 89/104, Art. 5(1)(a)) 3. Approximation of laws — Trade marks — Directive 89/104 — Rights conferred by a trade mark — Right to prohibit the first placing into circulation within the European Economic Area of original goods bearing the mark — Right for the proprietor of a mark to oppose placement under the duty suspension regime, without its consent, of goods put into free circulation and bearing the mark (Council Directive 89/104, Art. 5(1) and (3)) 1. There is use of a sign identical to the trade mark, within the meaning of Article 5 of First Directive 89/104 on trade marks, where the economic operator concerned uses the sign in its own commercial communications. That is the case, for example, where an economic operator imports or sends to a warehousekeeper goods bearing a trade mark of which it is not a proprietor with a view to releasing them for marketing. (see paras 41, 42) 2. Concerning the expression ‘in the course of trade’, referred to in Article 5 of the First Directive 89/104 on trade marks, the use of a sign identical to a trade mark constitutes use in the course of trade where it occurs in the context of commercial activity with a view to economic advantage and not as a private matter. That is evidently the case where an economic operator active in the parallel trade of trade-marked goods, imports and stores such goods. (see paras 43, 44) 3. Article 5 of First Directive 89/104 on trade marks must be interpreted as meaning that the proprietor of a trade mark registered in one or more Member States may oppose a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor. The importation of products without the consent of the proprietor of the trade mark concerned and the holding of those products in a tax warehouse before their release for consumption in the European Union has the effect of depriving the proprietor of that mark of the possibility of controlling the conditions of the first placing on the market within the EEA of products bearing its trade mark. Such acts also adversely affect the function of the trade mark of identifying the undertaking from which the products originate and under whose control the initial placing on the market is organised. That analysis is not invalidated by the fact that goods imported and placed under the duty suspension arrangement can subsequently be exported to a third State and thus never be released for consumption in a Member State. That possibility cannot preclude the application of the rules on trade marks to goods imported into the European Union. Furthermore, exportation is also itself an act covered by Article 5(3) of Directive 89/104. (see paras 48-50, operative part)