Case C-283/01: Reference for a preliminary ruling by the Hoge Raad der Nederlanden by judgment of that court of 13 July 2001 in the case of Shield Mark B.V. against Joost Kist, trading as Memex
Date: 2001-09-29
Institutions: Court of Justice
Subjects: interpretation of the law, patents licence, trade mark, trade-mark law

29.9.2001

EN

Official Journal of the European Communities

C 275/7

Action brought on 16 July 2001 by the Commission of
the European Communities against the Council of the
European Union

Reference for a preliminary ruling by the Hoge Raad der
Nederlanden by judgment of that court of 13 July 2001 in
the case of Shield Mark B.V. against Joost Kist, trading as
Memex

(Case C-281/01)

(2001/C 275/13)

An action against the Council of the European Union was
brought before the Court of Justice of the European Communi-
ties on 16 July 2001 by the Commission of the European
Communities, represented by Mr Hendrik van Lier and
Mr Bernd Martenczuk, acting as agents, with an address for
service in Luxembourg.

The Applicant requests that the Court should:

— annul decision 2001/469/EC of the Council of 14 May
2001, concerning the conclusion on behalf of the Euro-
pean Community of the Agreement between the Govern-
ment of the United States of America and the European
Community on the coordination of energy-efficient label-
ling programs for office equipment (1);

— order the Council to pay the costs.

Pleas in law and main arguments

The proposal submitted by the Commission to the Council for
the conclusion of the Energy Star Agreement was based on
Article 133 EC in conjunction with Article 300 EC. Amending
the Commission’s proposal, the Council decided to base its
decision concerning the conclusion of the aforementioned
Agreement not on Article 133, but on Article 175(1)
in
conjunction with Article 300 EC.

The Commission considers that, given its aims and content,
the Energy Star Agreement falls entirely within the scope of
the Community’s common commercial policy and that its
conclusion should have been based on Article 133. The
decision concerning the conclusion of the Agreement should
not, therefore, have been based on Article 175(1), which
concerns measures adopted in the field of the Community’s
environmental policy. The Commission considers the choice
of the legal basis by the Council for the conclusion of the
Agreement to be erroneous, and the attached decision to be
illegal.

(Case C-283/01)

(2001/C 275/14)

Reference has been made to the Court of Justice of the
European Communities by judgment of the Hoge Raad der
Nederlanden (Netherlands Supreme Court) of 13 July 2001,
received at
for a
preliminary ruling in the case of Shield Mark B.V. v Joost Kist,
trading as Memex — on the following questions:

the Court Registry on 18 July 2001,

1.

(a) Must Article 2 of

the First Council Directive
89/104/EEC (1) of 21 December 1988 to approxi-
mate the laws of the Member States relating to trade
marks be interpreted as precluding sounds or noises
from being regarded as trade marks?

(b)

If the answer to question 1(a) is in the negative, does
the system established by the Directive require that
sounds or noises should be regarded as trade marks?

2.

(a)

If the answer to question 1(a) is in the negative,
what requirements does the Directive lay down for
sound marks as regards the reference in Article 2 to
the need for the sign to be capable of being
represented graphically and, in conjunction there-
with, as regards the way in which the registration of
such a trade mark must take place?

(b)

In particular, are the requirements referred to in (a)
satisfied if the sound or the noise is registered in the
form of:

— musical notation;

— an onomatopoeic description in words;

— a description in words in some other way;

— a graphical representation such as a spectro-

gram or sonogram;

— a sound recording medium annexed to the

registration form;

— a digital recording that may be listened to on

the internet;

— a combination of those methods;

— some other method, and if so, which?

(1) OJ L 172, 26.06.2001, p. 1.

(1) OJ 1989 L 40, p. 1.