Judgment of the Court of 13 September 2001. - Schieving-Nijstad vof and Others v Robert Groeneveld. - Reference for a preliminary ruling: Hoge Raad der Nederlanden - Netherlands. - Agreement establishing the World Trade Organisation - Article 50(6) of the TRIPs Agreement - Interpretation - Direct effect - Application to proceedings pending at the time of entry into force in the State concerned - Conditions regarding the time-limit for bringing substantive proceedings - Calculation of that time-limit. - Case C-89/99.



European Court reports 2001 Page I-05851



Summary

Parties

Grounds

Decision on costs

Operative part



Keywords

1. International agreements - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) - Application to proceedings pending at the time of entry into force of the Agreement in the State concerned - Conditions

(TRIPS Agreement, Art. 50)

2. International agreements - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) - Article 50(6) - Direct effect - Absence - Obligations of national courts in the areas covered by Community law

(TRIPS Agreement, Art. 50(6))

3. International agreements - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) - Provisional measures - Lapse on the ground that no substantive action has been brought within the period prescribed - Need for a request by the defendant - Determination of the period within which substantive proceedings are to be instituted and power of the judicial authorities to determine that period of their own motion - Questions falling within the competence of each Member State

(TRIPS Agreement, Art.50(6))

Summary

1. Where the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, approved on behalf of the Community, as regards matters within its competence, by Decision 94/800, became applicable in the Member State concerned at a time when the court of first instance has heard the case but not yet delivered its decision, Article 50 of the TRIPs Agreement is applicable to the extent that the infringement of intellectual property rights continues beyond the date on which the TRIPs Agreement became applicable with regard to the Community and the Member States.

( see para. 50 and operative part 1 )

2. The procedural requirements of Article 50 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, and in particular Article 50(6), are not such as to create rights upon which individuals may rely directly before the Community courts and the courts of the Member States. Nevertheless, where the judicial authorities are called upon to apply national rules with a view to ordering provisional measures for the protection of intellectual property rights falling within a field to which the TRIPs Agreement applies and in respect of which the Community has already legislated, they are required to do so as far as possible in the light of the wording and purpose of Article 50(6) of the TRIPs Agreement, taking account, more particularly, of all the circumstances of the case before them, so as to ensure that a balance is struck between the competing rights and obligations of the intellectual property right holder and of the defendant.

( see para. 55 and operative part 2 )

3. Article 50(6) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, is to be interpreted as meaning that a request by the defendant is necessary in order for the provisional measures ordered by way of interim relief to lapse on the ground that no substantive action has been brought either within the period prescribed in the provisional measures or, where no period is prescribed, within 20 working days or 31 calendar days, whichever is the longer period.

In the absence of any provision in the TRIPs Agreement concerning the point in time at which the period of 20 working days or 31 calendar days prescribed by Article 50(6) of that agreement is to start, it is for each contracting party to determine when that period is to start, provided always that it is reasonable having regard to the circumstances of each case and taking into account the balance to be struck between the competing rights and obligations of the intellectual property right holder and of the defendant.

Moreover, in the absence of any Community rule on the point and in accordance with Article 1(1) of the TRIPs Agreement, it is for each Member State to determine the limits of the powers of the judicial authorities in ordering provisional measures. Article 50(6) of the TRIPs Agreement neither requires nor forbids the legal order of a Member State to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted at the same time as ordering provisional measures, without any request by the defendant being necessary for that purpose.

Lastly, Article 50(6) of the TRIPs Agreement neither requires nor forbids the Member States to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted. Since the provision in question is silent on that point, the scope of the powers conferred on appellate courts in that regard falls within the competence of each Member State.

( see paras 61, 66, 70, 73 and operative part 3-6 )

Parties

In Case C-89/99,

REFERENCE to the Court under Article 177 of the EC Treaty (now Article 234 EC) by the Hoge Raad der Nederlanden (Netherlands) for a preliminary ruling in the proceedings pending before that court between

Schieving-Nijstad vof and Others

and

Robert Groeneveld,

on the interpretation of Article 50(6) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, approved on behalf of the Community, as regards matters within its competence, by Council Decision 94/800/EC of 22 December 1994 (OJ 1994 L 336, p. 1),

THE COURT,

composed of: G.C. Rodríguez Iglesias, President, C. Gulmann, A. La Pergola, M. Wathelet and V. Skouris (Presidents of Chambers), D.A.O. Edward (Rapporteur), J.-P. Puissochet, P. Jann, L. Sevón, R. Schintgen, F. Macken, N. Colneric, S. von Bahr, J.N. Cunha Rodrigues and C.W.A. Timmermans, Judges,

Advocate General: F.G. Jacobs,

Registrar: L. Hewlett, Administrator,

after considering the written observations submitted on behalf of:

- Mr Groeneveld, by L.M. Schreuders-Ebbekink, advocaat,

- the French Government, by K. Rispal-Bellanger and S. Seam, acting as Agents,

- the Portuguese Government, by L. Fernandes, T. Moreira and J. Palma, acting as Agents,

- the United Kingdom Government, by J.E. Collins, acting as Agent, assisted by M. Hoskins, barrister,

- the Council of the European Union, by J. Huber and G. Houttuin, acting as Agents,

- the Commission of the European Communities, by P.J. Kuijper, acting as Agent,

having regard to the Report for the Hearing,

after hearing the oral observations of Schieving-Nijstad vof and Others, represented by P. Garretsen, advocaat, and of the Commission, represented by H.M.H. Speyart, acting as Agent, at the hearing on 17 October 2000,

after hearing the Opinion of the Advocate General at the sitting on 15 February 2001,

gives the following

Judgment

Grounds

1 By order of 5 March 1999, received at the Court on 15 March 1999, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) referred to the Court for a preliminary ruling under Article 177 of the EC Treaty (now Article 234 EC) six questions concerning the interpretation of Article 50(6) 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 Organisation (the WTO Agreement), approved on behalf of the Community, as regards matters within its competence, by Council Decision 94/800/EC of 22 December 1994 (OJ 1994 L 336, p. 1).

2 Those questions have been raised in proceedings between, on the one hand, the commercial partnership Schieving-Nijstad vof and its owners (hereinafter Schieving-Nijstad et al.) and, on the other, Mr Robert Groeneveld, concerning an application brought by Mr Groeneveld for provisional measures to restrain an alleged infringement of a trade mark held by him.

The Community rules

3 The Final Act embodying the results of the Uruguay Round of multilateral trade negotiations and, subject to conclusion, the WTO Agreement were signed in Marrakesh (Morocco) on 15 April 1994 by the representatives of the Community and of the Member States.

4 The 11th recital in the preamble to Decision 94/800 states:

Whereas, by its nature, the Agreement establishing the World Trade Organisation, including the Annexes thereto, is not susceptible to being directly invoked in Community or Member State courts.

5 Article 1(1) of that decision provides:

The following multilateral agreements and acts are hereby approved on behalf of the European Community with regard to that portion of them which falls within the competence of the European Community:

- the Agreement establishing the World Trade Organisation, and also the Agreements in Annexes 1, 2 and 3 to that Agreement;

....

6 In its preamble, TRIPs expressly recognises the need for new rules and disciplines concerning:

...

(b) the provision of adequate standards and principles concerning the availability, scope and use of trade-related intellectual property rights;

(c) the provision of effective and appropriate means for the enforcement of trade-related intellectual property rights, taking into account differences in national legal systems;

....

7 Article 1(1) of TRIPs, headed Nature and Scope of Obligations, provides:

Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.

8 Article 8(2) of TRIPs is in the following terms:

Appropriate measures, provided that they are consistent with provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

9 Part III of TRIPs, headed Enforcement of Intellectual Property Rights, imposes general obligations on the contracting members. In particular, Article 41(1) and (2) of TRIPs provides:

1. Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.

2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delays.

10 The provisions of Article 50 of TRIPs, which are in issue in the main proceedings, are as follows:

1. The judicial authorities shall have the authority to order prompt and effective provisional measures:

(a) to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance;

(b) to preserve relevant evidence in regard to the alleged infringement.

2. The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed.

...

4. Where provisional measures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed.

...

6. Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer.

...

11 Article 70(1) of TRIPs provides:

This Agreement does not give rise to obligations in respect of acts which occurred before the date of application of the Agreement for the Member in question.

12 The WTO Agreement and TRIPs, which forms an integral part of it, entered into force on 1 January 1995. However, according to Article 65(1) of TRIPs, the members were not obliged to apply the provisions of TRIPs before the expiry of a general period of one year, that is to say, before 1 January 1996 (hereinafter the deadline).

The national rules

13 The Netherlands procedural rules concerning applications for provisional measures are laid down by the Wetboek van Burgerlijke Rechtsvordering (Netherlands Code of Civil Procedure, hereinafter the Code), which has not been amended since TRIPs became applicable.

14 Article 289(1) of the Code provides:

In all cases in which, having regard to the interests of the parties, an immediate provisional measure is necessary on grounds of urgency, the application may be made at a hearing which the President shall hold for that purpose on working days which he shall fix.

15 In such a case, Article 290(2) of the Code provides that the parties may appear before the President under his voluntary jurisdiction to grant interim measures, in which case the applicant must be represented at the hearing by counsel, whereas the defendant may appear in person or be represented by counsel.

16 According to Article 292 of the Code, an interim measure adopted by the President does not prejudge the substantive examination of the merits of the case. In that regard, the parties tend in practice to waive such examination and to abide by the decision given in the interim proceedings. According to the information provided to the Court, this means that the subsequent institution of substantive proceedings is unnecessary in most Netherlands cases.

17 In addition, there is no statutory time-limit under Netherlands law for the institution of substantive proceedings. Neither the legislation nor the case-law expressly confers on the courts any power to prescribe such a time-limit. Nevertheless, the current practice is that the courts tend to fix time-limits of several months' duration, for the purposes of which time starts to run from various dates, depending on the case concerned.

18 The Court has previously ruled that 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 such as that provided for by the provisions of the Code referred to in paragraphs 13 to 16 of this judgment constitutes a provisional measure within the meaning of Article 50(1) of TRIPs (Case C-53/96 Hermès [1998] ECR I-3603).

The dispute in the main proceedings and the questions referred

19 On six occasions between 21 June 1979 and 23 February 1995, Mr Groeneveld filed Route 66 figurative marks in respect of various classes of goods and services. Those registrations covered, in particular, classes 32, 33 and 42, respectively covering alcoholic beverages and soft drinks, restaurant services and hotel/catering services.

20 Mr Groeneveld has granted some 20 licences to manufacturers for the marketing of products sold under the mark Route 66, in particular stickers and posters, neon light fittings and alcoholic beverages.

21 Route 66 is the name of an old expressway in the United States. The representation of the figurative mark in question is based on the road sign for that route in the days when it was still in use over its entire length.

22 Schieving-Nijstad et al. operate a discotheque in Meppel (Netherlands), known as the Lord Nelson. Since at least March 1995, that discotheque has incorporated a café, named Route 66, which is decorated with all sorts of symbols of the United States, in particular ones which hark back to the 1950s. There is a neon sign reading Route 66 attached to the outside of the building housing the discotheque, and two Route 66 signs have been installed in the windows. Inside the café are hung all manner of road signs, posters and plates, including various shields reading Route 66.

23 Schieving-Nijstad et al. have not been granted a licence by Mr Groeneveld. The shields and the sign have not been marketed by or on behalf of Mr Groeneveld or any of his licensees.

24 Having in vain served on Schieving-Nijstad et al. formal notice to desist from using the mark Route 66, Mr Groeneveld made an urgent application to the Rechtbank te Assen (Assen District Court) in the Netherlands for an interim order. By judgment of 9 January 1996, the President of that court ordered Schieving-Nijstad et al., inter alia, forthwith to desist and to refrain from using the name (Café) Route 66 and the marks Route 66 in relation to the goods and services in respect of which they were registered, in particular restaurant and catering services.

25 That judgment was upheld by the Gerechtshof te Leeuwarden (Regional Court of Appeal, Leeuwarden), whereupon Schieving-Nijstad et al. lodged an appeal in cassation before the Hoge Raad der Nederlanden.

26 Before that court, Schieving-Nijstad et al. have pleaded the direct effect of Article 50(6) of TRIPs, which became applicable in the Netherlands, at latest, on the deadline. They have requested the national court to rule that, if and in so far as the provisional measures ordered by the President of the Rechtbank te Assen were open to be upheld or granted, those measures remained operative for no longer than 20 working days or 31 calendar days after notification, whichever was the longer, after which they must be deemed to have been revoked, since Mr Groeneveld did not institute substantive proceedings against them within that period.

27 In order to bring the case to a satisfactory conclusion, the Hoge Raad der Nederlanden has decided to stay proceedings and to refer the following six questions to the Court for a preliminary ruling:

(1) Does Article 50 of TRIPs, in particular Article 50(6), have direct effect?

(2) Is Article 50(6) of TRIPs to be interpreted as meaning that provisional measures within the meaning of Article 50(1) and (2) lapse automatically by operation of law either if the substantive proceedings are not instituted within the period prescribed in the provisional measure or, where no period is prescribed, if the substantive proceedings are not commenced within 20 working days or 31 calendar days (whichever is the longer period), or is a request by the party against whom a measure has been ordered (invariably) necessary in order for that measure to lapse?

(3) Where the time-limit within which the substantive proceedings must be brought is not prescribed in the provisional measures ordered, does it commence on:

(a) the day after the date on which the court ordered the provisional measure in question; or

(b) the day after the date on which the decision ordering the provisional measure was served on the defendant; or

(c) the day after the date on which the decision ordering the provisional measure became definitive and no longer open to challenge; or

(d) at any other point in time?

(4) Where a court orders a provisional measure, must it of its own motion fix a time-limit within which substantive proceedings are to be instituted, or may it fix such a time-limit only if an application is made to that effect?

(5) Where a court is called upon in appeal proceedings to adjudicate on a measure ordered by a lower court in proceedings at first instance, and that appellate court confirms that measure, is it open to the appellate court to prescribe, either of its own motion or on application by one of the parties, a time-limit within the meaning hereinbefore referred to, if the court seised of the matter at first instance has not done so?

(6) Is Article 50 of TRIPs applicable where that agreement enters into force in the Member State concerned on a date following the closure of the trial procedure at first instance but before the court seised of the first-instance proceedings has delivered its decision?

Assessment by the Court

28 Before those questions are answered, it is appropriate to make certain preliminary observations on the regime introduced by TRIPs.

The regime introduced by TRIPs

29 The questions referred concern the detailed procedural rules governing the ordering of provisional measures in proceedings to restrain a third party from using, without the consent of the proprietor of a registered trade mark, signs which are identical or similar to those by which that mark is represented, in respect of goods or services which are the same as, or similar to, the signs covered by the mark in question.

30 In the field of trade marks, to which TRIPs is applicable and in respect of which the Community has already legislated, the Court has jurisdiction to interpret Article 50 of TRIPs - as, indeed, it has previously had occasion to do (see Hermès, cited above, and Joined Cases C-300/98 and C-392/98 Dior and Others [2000] ECR I-11307). It is therefore appropriate to recapitulate the principles laid down in that case-law.

31 First, the Court has held that Article 50(6) of TRIPs is a procedural provision intended to be applied by Community and national courts in accordance with obligations assumed both by the Community and by the Member States (Dior and Others, cited above, paragraph 46).

32 Article 50 of TRIPs does not lay down any detailed rules concerning the procedure to be followed for the enforcement of intellectual property rights.

33 Indeed, Article 1(1) of TRIPs, relating to the (n)ature and (s)cope of (o)bligations, provides that Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.

34 It follows that, in the absence of any Community rules in the matter, it is for the domestic legal system of each Member State to lay down the detailed procedural rules relating to actions for the enforcement of intellectual property rights.

35 Nevertheless, it is apparent from the Court's case-law that, in a field to which TRIPs applies and in respect of which the Community has already legislated, the judicial authorities of the Member States are required by virtue of Community law, when called upon to apply national rules with a view to ordering provisional measures for the protection of rights falling within such a field, to do so as far as possible in the light of the wording and purpose of Article 50 of TRIPs (see Hermès, paragraph 28, and Dior and Others, paragraph 47).

36 The primary objective of TRIPs is to strengthen and harmonise the protection of intellectual property on a worldwide scale (see in that regard Opinion 1/94 of 15 November 1994 [1994] ECR I-5267, paragraph 58).

37 According to its preamble, the object of TRIPs is to reduce distortions and impediments to international trade, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade. Those objectives are also set out in Article 41(1) and (2) of TRIPs.

38 It is therefore for the judicial authorities, when called upon to apply national rules with a view to ordering provisional measures, to take into account all the circumstances of the case before them, so as to ensure that a balance is maintained between the competing rights and obligations of the right holder and of the defendant.

39 From the standpoint of the right holder, the mechanism provided for in Article 50 of TRIPs strengthens the right which is to be guaranteed to him pursuant to Article 41(1) of TRIPs, namely the right to obtain expeditious remedies to prevent infringements of those rights and remedies which constitute a deterrent to further infringements.

40 However, Article 8(2) of TRIPs recognises that intellectual property rights may be abused and that right holders may resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology. That could be the position, in particular, if provisional measures were prescribed without the defendant being heard.

41 With a view to preventing such abuse, Article 50(4) of TRIPs provides that, where the defendant has not been heard, he is entitled to request an immediate review of the provisional measures ordered.

42 In addition, whether the defendant has been heard or not, Article 50(6) of TRIPs establishes in his favour a safeguard measure to protect him against any abuse of intellectual property rights, by laying down a simple procedure for setting aside unjustified provisional measures where no substantive proceedings have been instituted within the time-limit prescribed.

43 That mechanism is all the more important where the defendant contests the provisional measures prescribed by the judicial authority concerned and wishes to compel the right holder to bring substantive proceedings in the course of which the defendant will be in a position to put forward his full defence.

44 It should be noted in that regard that the WTO Agreement was concluded in the English, French and Spanish languages and that those three versions alone are authentic (see the closing wording of the WTO Agreement).

45 As it is, the French version of Article 50(6) of TRIPs provides that the provisional measures seront abrogées or cesseront de produire leurs effets if proceedings on the merits of the case are not initiated within the period prescribed. Similarly, the Spanish version provides that the measures in question se revocarán o quedarán de otro modo sin effecto. The English version uses the term shall rather than may.

46 It is therefore apparent, both from the wording of the three authentic versions of TRIPs and from the objective of Article 50(6), that the mechanism established by that provision is based on the premiss that the intellectual property right holder whose application for provisional measures has been granted will normally institute substantive proceedings seeking a definitive measure with regard to the alleged infringement of those rights, in the course of which the defendant will be in a position to put forward his full defence.

47 It is in the light of the foregoing considerations that the questions referred should now be examined.

The relevance, in terms of its temporal scope, of TRIPs with regard to the case before the national court (sixth question)

48 The last question, which it is appropriate to consider first, raises certain doubts as to the relevance of TRIPs for the purposes of determining the proceedings before the referring court. In the present case, TRIPs became applicable in the Netherlands after the close of the proceedings brought by Mr Groeneveld before the Rechtbank te Assen but before that first-instance court had given its ruling. According to the United Kingdom Government, the effect of Article 70(1) of TRIPs is to preclude the application of that agreement, since the events at issue in the main proceedings occurred before the deadline.

49 That argument cannot, however, be accepted. Although the alleged infringement of Mr Groeneveld's rights by Schieving-Nijstad et al. commenced in March 1995, that is to say, before the deadline, that does not necessarily mean that such acts definitively occurred, within the meaning of Article 70(1) of TRIPs, before that date. Assuming that the acts alleged against Schieving-Nijstad et al. continued up to the date on which the court hearing the application for interim relief made its order for provisional measures, that is to say, 9 January 1996, that court was required, as far as might be possible, to apply the Netherlands rules in the light of the wording and object of Article 50 of TRIPs.

50 The answer to the sixth question must therefore be that, where TRIPs became applicable in the Member State concerned at a time when the court of first instance has heard the case but not yet delivered its decision, Article 50 of that agreement is applicable to the extent that the infringement of intellectual property rights continues beyond the date on which TRIPs became applicable with regard to the Community and the Member States.

The direct effect of Article 50(6) of TRIPs (first question)

51 By its first question, the national court is asking whether, and to what extent, the procedural requirements of Article 50 of TRIPs, and of Article 50(6) in particular, have direct effect.

52 That question is essentially the same as those raised in Dior and Others.

53 The Court ruled that the provisions of TRIPs do not have direct effect, inasmuch as they are not such as to create rights upon which individuals may rely directly before the national courts by virtue of Community law (see the judgment in Dior and Others, paragraphs 44 and 46).

54 However, as in the cases giving rise to the judgment in Dior and Others, that ruling does not fully resolve the problems facing the national court in the present case. It should therefore be made clear that it follows from the principles set out in paragraphs 31 to 46 of the present judgment that, where the judicial authorities are called upon to apply national rules with a view to ordering provisional measures for the protection of intellectual property rights falling within a field to which TRIPs applies and in respect of which the Community has already legislated, they are required to do so as far as possible in the light of the wording and purpose of Article 50(6) of TRIPs, taking account, more particularly, of all the circumstances of the case before them, so as to ensure that a balance is struck between the competing rights and obligations of the right holder and of the defendant.

55 The answer to the first question must therefore be that the procedural requirements of Article 50 of TRIPS, and in particular Article 50(6), are not such as to create rights upon which individuals may rely directly before the Community courts and the courts of the Member States. Nevertheless, where the judicial authorities are called upon to apply national rules with a view to ordering provisional measures for the protection of intellectual property rights falling within a field to which TRIPs applies and in respect of which the Community has already legislated, they are required to do so as far as possible in the light of the wording and purpose of Article 50(6) of TRIPs, taking account, more particularly, of all the circumstances of the case before them, so as to ensure that a balance is struck between the competing rights and obligations of the right holder and of the defendant.

The need for a request to be made by the defendant in order for Article 50(6) of TRIPs to apply (second question)

56 By its second question, the national court is asking, in essence, whether Article 50(6) of TRIPs is to be interpreted as meaning that a request by the defendant is necessary in order for the provisional measures ordered by way of interim relief to lapse, or whether those measures lapse automatically by operation of law if no substantive proceedings are instituted either within the period prescribed in the provisional measures or, where no period is prescribed, within 20 working days or 31 calendar days, whichever is the longer period.

57 It should be noted at the outset that there is no need, in the context of the Netherlands procedure applicable to the main proceedings, to consider whether Article 50(6) of TRIPs precludes the legislation of a Member State from providing that provisional measures ordered by the judicial authorities of that State are to lapse automatically, even where the defendant has not lodged a request to that effect, solely on the ground that no substantive proceedings have been instituted within the period prescribed.

58 According to the order for reference, the wording of the Dutch version of Article 50(6) of TRIPs differs from that of the French and English versions, inasmuch as the interpolated phrase upon request by the defendant appears between the words shall ... be revoked and cease to have effect (worden op grond van het eerste en tweede lid genomen voorlopige maatregelen op verzoek van de verweerder herroepen of houden zij anderszins op gevolg te hebben).

59 Before the Hoge Raad der Nederlanden, Schieving-Nijstad et al. asserted that the expression upon request by the defendant can only refer to the words shall be revoked, so that the application of the phrase otherwise cease to have effect cannot be conditional on a request being made by the defendant.

60 As the Advocate General observes in point 48 of his Opinion, it is apparent from the three authentic versions of TRIPs, in which the wording of Article 50(6) is the same, that the interpolated words upon request by the defendant follow or precede the phrase shall ... be revoked or otherwise cease to have effect. That formulation shows that a request by the defendant, which is necessary for the purposes of legal certainty, is required both in order for the provisional measures to be revoked and in order for them otherwise to cease to have effect.

61 The answer to the second question must therefore be that Article 50(6) of TRIPs is to be interpreted as meaning that a request by the defendant is necessary in order for the provisional measures ordered by way of interim relief to lapse on the ground that no substantive action has been brought either within the period prescribed in the provisional measures or, where no period is prescribed, within 20 working days or 31 calendar days, whichever is the longer period.

The point at which time starts to run for the purposes of the time-limit referred to in Article 50(6) of TRIPs (third question)

62 By its third question, the national court is asking, in essence, when the time-limit for bringing the substantive proceedings starts to run where it is not prescribed in the provisional measures ordered by the court hearing the interim application.

63 The national court suggests three possible points in time from which the period of 20 working days or 31 calendar days prescribed in Article 50(6) of TRIPs may start to run: (i) the day after that on which the court ordered the provisional measure in question, (ii) the day after that on which the decision ordering that measure was notified to the defendant or (iii) the day after that on which the decision ordering the provisional measure became definitive and no longer open to challenge.

64 The point in time at which the substantive proceedings must be instituted is important in that, without prejudice to the provisions of Article 50(4) of TRIPs, the defendant's request for revocation of the provisional measures ordered by way of interim relief in accordance with Article 50(6) cannot be lodged before expiry of the period of 20 working days or 31 calendar days prescribed by the latter provision. Deferring the start of that period would prolong the life of application of the provisional measures adopted. Be that as it may, Article 50(6) of TRIPs does not specify the starting point of such period.

65 It follows from the principles set out in paragraphs 31 to 34 above that, in the absence of any indication in this regard in TRIPs, it is for each contracting party to determine the point in time at which the period of 20 working days or 31 calendar days prescribed by Article 50(6) of TRIPs is to start, provided always that the period thus fixed is reasonable having regard to the circumstances of each case and taking into account the balance to be struck between the competing rights and obligations of the intellectual property right holder and of the defendant.

66 The answer to the third question must therefore be that, in the absence of any provision in TRIPs concerning the point in time at which the period of 20 working days or 31 calendar days prescribed by Article 50(6) of that agreement is to start, it is for each contracting party to determine when that period is to start, provided always that it is reasonable having regard to the circumstances of each case and taking into account the balance to be struck between the competing rights and obligations of the intellectual property right holder and of the defendant.

The extent of discretion enjoyed by the judicial authorities (fourth and fifth questions)

67 By its fourth and fifth questions, the national court is asking, in essence, whether Article 50(6) of TRIPs precludes the judicial authorities, either in the first-instance proceedings or on appeal, from prescribing a reasonable time-limit, either of their own motion or on application by one of the parties, when, as the case may be, they order or confirm the adoption of provisional measures.

68 It should be borne in mind that Article 50(6) of TRIPs expressly provides that what constitutes a reasonable period is to be determined by the judicial authority ordering the measures where a Member's law so permits. In that regard, it follows from paragraphs 31 to 34 of this judgment that, in the absence of any Community rule on the point and in accordance with Article 1(1) of TRIPs, it is for each Member State to determine the limits of the powers of the judicial authorities in ordering provisional measures.

69 As regards the fourth question, it should be noted that there is nothing in the wording of Article 50(6) of TRIPs to indicate that a request by the defendant is required in order to determine the period within which the substantive proceedings are to be instituted. On the other hand, nothing in that article precludes the domestic legal order of a Member State from providing, where appropriate, that the judicial authorities of that State are to be empowered to determine the period in question of their own motion at the same time as ordering provisional measures, without any request by the defendant being necessary for that purpose.

70 The answer to the fourth question must therefore be that, in the absence of any Community rule on the point and in accordance with Article 1(1) of TRIPs, it is for each Member State to determine the limits of the powers of the judicial authorities in ordering provisional measures. Article 50(6) of TRIPs neither requires nor forbids the legal order of a Member State to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted at the same time as ordering provisional measures, without any request by the defendant being necessary for that purpose.

71 As regards the fifth question, it should be noted that, contrary to the assertion put forward by Mr Groeneveld, use of the phrase the judicial authority ordering the measures in Article 50(6) of TRIPs does not exclude that power to determine the period within which substantive proceedings are to be instituted be conferred both on appellate courts and on courts of first instance. Since the provision in question is silent on that point, it follows that the scope of the powers of appellate courts in that regard falls within the competence of each Member State.

72 Consequently, Article 50(6) of TRIPs confers on the Member States, within the framework of their internal legal systems, the right to confer on the judicial authorities such powers as they may think fit for determining the period within which substantive proceedings are to be instituted.

73 The answer to the fifth question must therefore be that Article 50(6) of TRIPs neither requires nor forbids the Member States to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted. Since the provision in question is silent on that point, the scope of the powers conferred on appellate courts in that regard falls within the competence of each Member State.

Decision on costs

Costs

74 The costs incurred by the French, Portuguese and United Kingdom Governments and by the Council and the Commission, which have submitted observations to the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court.

Operative part

On those grounds,

THE COURT,

in answer to the questions referred to it by the Hoge Raad der Nederlanden by order of 5 March 1999, hereby rules:

1. Where the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPs Agreement), as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, approved on behalf of the Community, as regards matters within its competence, by Council Decision 94/800/EC of 22 December 1994, became applicable in the Member State concerned at a time when the court of first instance has heard the case but not yet delivered its decision, Article 50 of the TRIPs Agreement is applicable to the extent that the infringement of intellectual property rights continues beyond the date on which the TRIPs Agreement became applicable with regard to the Community and the Member States.

2. The procedural requirements of Article 50 of the TRIPS Agreement, and in particular Article 50(6), are not such as to create rights upon which individuals may rely directly before the Community courts and the courts of the Member States. Nevertheless, where the judicial authorities are called upon to apply national rules with a view to ordering provisional measures for the protection of intellectual property rights falling within a field to which the TRIPs Agreement applies and in respect of which the Community has already legislated, they are required to do so as far as possible in the light of the wording and purpose of Article 50(6) of the TRIPs Agreement, taking account, more particularly, of all the circumstances of the case before them, so as to ensure that a balance is struck between the competing rights and obligations of the intellectual property right holder and of the defendant.

3. Article 50(6) of the TRIPs Agreement is to be interpreted as meaning that a request by the defendant is necessary in order for the provisional measures ordered by way of interim relief to lapse on the ground that no substantive action has been brought either within the period prescribed in the provisional measures or, where no period is prescribed, within 20 working days or 31 calendar days, whichever is the longer period.

4. In the absence of any provision in the TRIPs Agreement concerning the point in time at which the period of 20 working days or 31 calendar days prescribed by Article 50(6) of that agreement is to start, it is for each contracting party to determine when that period is to start, provided always that it is reasonable having regard to the circumstances of each case and taking into account the balance to be struck between the competing rights and obligations of the intellectual property right holder and of the defendant.

5. In the absence of any Community rule on the point and in accordance with Article 1(1) of the TRIPs Agreement, it is for each Member State to determine the limits of the powers of the judicial authorities in ordering provisional measures. Article 50(6) of the TRIPs Agreement neither requires nor forbids the legal order of a Member State to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted at the same time as ordering provisional measures, without any request by the defendant being necessary for that purpose.

6. Article 50(6) of the TRIPs Agreement neither requires nor forbids the Member States to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted. Since the provision in question is silent on that point, the scope of the powers conferred on appellate courts in that regard falls within the competence of each Member State.