Keywords

Summary



Keywords

1 Approximation of laws - Trade marks - Directive 89/104 - Product put into circulation outside the European Economic Area by the proprietor of the trade mark or with his consent - Imported into a Member State - Objection by the proprietor - National rules providing for international exhaustion of the rights conferred by the trade mark - Not permissible

(Council Directive 89/104, Arts 5 and 7(1))

2 Approximation of laws - Trade marks - Directive 89/104 - Product put into circulation outside the European Economic Area by the proprietor of the mark or with his consent - Imported into a Member State - Objection by the proprietor - Grant of an order prohibiting the use of the trade mark solely on the basis of Article 7(1) of the directive - Excluded

(Council Directive 89/104, Arts 5 and 7(1))

3 Acts of the institutions - Directives - Direct effect - Limits - Whether a directive may be relied on as against an individual - Not possible - Implementation by the Member States - Duty of national courts

(EC Treaty, Art. 189(3))

Summary

1 National rules providing for exhaustion of trade-mark rights in respect of products put on the market outside the EEA under that mark by the proprietor or with his consent are contrary to Article 7(1) of the First Directive 89/104 on trade marks.

An interpretation of the directive to the effect that it leaves Member States free to provide in their national law for exhaustion, not only in respect of products put on the market in the European Economic Area but also of those put on the market in non-member countries, is contrary to the wording of Article 7 and to the scheme and purpose of the rules of the directive concerning the rights which a trade mark confers on its proprietor. Although the third recital in the preamble to the directive states that `it does not appear to be necessary at present to undertake full-scale approximation of the trade mark laws of the Member States', the directive none the less provides for harmonisation in relation to substantive rules of central importance in this sphere, that is to say, the rules concerning those provisions of national law which most directly affect the functioning of the internal market.

According to the first recital in the preamble to the directive, the trade mark laws applicable in the Member States contain disparities which may impede the free movement of goods and freedom to provide services and may distort competition within the common market and, according to the ninth recital, it is fundamental, in order to facilitate the free movement of goods and services, to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States.

Articles 5 to 7 must therefore be construed as embodying a complete harmonisation of the rules relating to the rights conferred by a trade mark.

Accordingly, the directive cannot be interpreted as leaving it open to the Member States to provide in their domestic law for exhaustion of the rights conferred by a trade mark in respect of products put on the market in non-member countries.

This, moreover, is the only interpretation which is fully capable of ensuring that the purpose of the directive is achieved, namely to safeguard the functioning of the internal market. A situation in which some Member States could provide for international exhaustion while others provided for Community exhaustion only would inevitably give rise to barriers to the free movement of goods and the freedom to provide services.

It is no objection to that interpretation that since the directive was adopted on the basis of Article 100a of the Treaty, it cannot regulate relations between the Member States and non-member countries. Even if Article 100a of the Treaty were to be construed in that sense, the fact remains that Article 7 is not intended to regulate relations between Member States and non-member countries but to define the rights of proprietors of trade marks in the Community.

2 Article 7(1) of First Directive 89/104 on trade marks cannot be interpreted as meaning that the proprietor of a trade mark is entitled, on the basis of that provision alone, to obtain an order restraining a third party from using his trade mark for products which have been put on the market outside the European Economic Area under that mark by the proprietor or with his consent.

The requirement that Member States should implement provisions on the basis of which the proprietor of a trade mark, when his rights are infringed, must be able to obtain an order restraining third parties from making use of his mark is imposed, not by Article 7, but by Article 5 of the directive, which defines the rights conferred by a trade mark.

3 Although a directive cannot of itself impose obligations on an individual and cannot therefore be relied upon as such against an individual, when applying domestic law, whether adopted before or after the directive, the national court that has to interpret that law must do so, as far as possible, in the light of the wording and the purpose of the directive so as to achieve the result it has in view and thereby comply with the third paragraph of Article 189 of the Treaty