Judgment of the Court of 20 September 2001 in Case C-383/99 P: Procter & Gamble Company v Office, for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Appeal — Admissibility — Community trade mark — Regulation (EC) No 40/94 — Absolute ground for refusal to register — Distinctive character — Marks consisting exclusively of descriptive signs or indications — "BABY-DRY")
Date: 2002-01-05
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), appeal, firm governed by commercial law, toiletries

5.1.2002

EN

Official Journal of the European Communities

C 3/9

3. Articles 44(3) and 58(1) of the above Agreement with the
Republic of Poland, read together, and Articles 45(3) and 59(1)
of the above Agreement with the Czech Republic, read together,
do not in principle preclude a system of prior control which
makes the issue by the competent immigration authorities of
leave to enter and remain subject to the condition that the
applicant must show that he genuinely intends to take up an
activity as a self-employed person without at the same time
entering into employment or having recourse to public funds,
and that he possesses,
from the outset, sufficient financial
resources for carrying out the activity in question as a self-
employed person and has reasonable chances of success.

Substantive requirements such as those set out in section 4.2.3
of Chapter B 12 of the Netherlands Vreemdelingencirculaire
(Circular on Aliens), in particular the requirement that Polish
and Czech nationals wishing to become established in the host
Member State must from the outset have sufficient financial
resources to carry on the activity in question in a self-employed
capacity, are designed precisely to enable the competent auth-
orities of that State to carry out such checks and are appropriate
for ensuring that such an objective is attained.

4. Article 44(4)(a)(i) of the above Agreement with the Republic
of Poland and Article 45(4)(a)(i) of the above Agreement with
the Czech Republic must be construed to the effect that the
‘economic activities as self-employed persons’ referred to in those
provisions have the same meaning and scope as the ‘activities
as self-employed persons’ referred to in Article 52 of the EC
Treaty (now, after amendment, Article 43 EC).

The activity of prostitution pursued in a self-employed capacity
can be regarded as a service provided for remuneration and is
therefore covered by both those expressions.

5. Article 44 of the above Agreement with the Republic of Poland
and Article 45 of the above Agreement with the Czech Republic
must be construed to the effect that prostitution is an economic
activity pursued by a self-employed person as referred to in those
provisions, where it is established that it is being carried on by
the person providing the service:

— outside any relationship of subordination concerning the
choice of that activity, working conditions and conditions
of remuneration;

— under that person’s own responsibility; and

— in return for remuneration paid to that person directly

and in full.

It is for the national court to determine in each case, in the light
of the evidence adduced before it, whether those conditions are
satisfied.

(1) OJ C 265 of 18.9.1999.

JUDGMENT OF THE COURT

of 20 September 2001

in Case C-383/99 P: Procter & Gamble Company v Office,
for Harmonisation in the Internal Market (Trade Marks
and Designs) (OHIM) (1)

(Appeal — Admissibility — Community trade mark —
Regulation (EC) No 40/94 — Absolute ground for refusal
to register — Distinctive character — Marks consisting
exclusively of descriptive signs or indications — ‘BABY-
DRY’)

(2002/C 3/12)

(Language of the case: French)

(Provisional translation; the definitive translation will be published
in the European Court Reports)

In Case C-383/99P: Procter and Gamble Company established
in Cincinnatti (United States) represented by T. van Innis,
avocat, appeal against the judgment of the Court of First
Instance of the European Communities (Second Chamber) of
8 July 1999 in Case T-163/98 Procter & Gamble v OHIM
(‘BABY-DRY’)
[1999] ECR II-2383, seeking to have that
judgment set aside in so far as the Court of First Instance ruled
that the First Board of Appeal of the Office for Harmonisation
in the Internal Market (Trade Marks and Designs) had not
infringed Article 7(1)(c) of Council Regulation (EC) No 40/94
of 20 December 1993 on the Community trade mark (OJ
1994 L 11, p. 1) in adopting its decision of 31 July 1998 (Case
R 35/1998-1), the other party to the proceedings being the
Office for Harmonisation in the Internal Market (Trade Marks
and Designs) (Agents: O. Montalto and E. Joly) — the Court,
composed of: G.C. Rodrı´guez Iglesias, President, C. Gulmann,
M. Wathelet and V. Skouris
(Presidents of Chambers),
J.-P. Puissochet (Rapporteur), P. Jann, L. Sevo´ n, R. Schintgen,
F. Macken, N. Colneric and S. von Bahr, Judges, F.G. Jacobs,
Advocate General; D. Louterman-Hubeau for the Registrar,
gave a judgment on 20 September 2001, in which it:

1. Annuls the judgment of the Court of First Instance of 8 July
1999 in Case T-163/98 Procter & Gamble v OHIM (‘BABY-
DRY’), in so far as it found that the First Board of Appeal of
the Office for Harmonisation in the Internal Market (Trade
Marks and Designs) did not infringe Article 7(1)(c) of Council
Regulation (EC) No 40/94 of 20 December 1993 on the
Community trade mark in adopting its decision of 31 July
1998 (Case R 35/1998-1);

C 3/10

EN

Official Journal of the European Communities

5.1.2002

2. Annuls the decision of the First Board of Appeal of the Office
for Harmonisation in the Internal market (Trade Marks and
Designs) of 31 July 1998 (Case R 35/1998-1) in so far as it
refused the application for registration of ‘BABY-DRY’ as a
trade mark on the basis of Article 7(1)(c) of Regulation
No 40/94;

3. Orders the Office for Harmonisation in the Internal Market
(Trade Marks and Designs) to pay the costs both at first
instance and on appeal.

(1) OJ C 6 of 8.1.2000.

JUDGMENT OF THE COURT

of 20 November 2001

in Joined Cases C-414/99 to C-416/99 [reference for a
preliminary ruling from the High Court of Justice of
England and Wales, Chancery Division (Patent Court)]:
Zino Davidoff SA and A & G Imports Ltd (C-414/99),
between Levi Strauss & Co., Levi Strauss (UK) Ltd and
Tesco Stores Ltd, Tesco plc (C-415/99), and between Levi
Strauss & Co., Levi Strauss (UK) Ltd v Costco Wholesale
UK Ltd (1)

(Trade marks — Directive 89/104/EEC — Article 7(1) —
Exhaustion of the rights conferred by a trade mark — Goods
placed on the market outside the EEA — Imported into the
EEA — Consent of the trade mark proprietor — Whether
consent required to be express or implied — Law governing
the contract Presumption of consent — Non-applicability)

(2002/C 3/13)

(Language of the case: English)

In Joined Cases C-414/99 to C-416/99 (reference to the Court
under Article 234 EC) from the High Court of Justice of
England and Wales, Chancery Division (Patent Court) (United
Kingdom of Great Britain and Northern Ireland) for a prelimi-
nary ruling in the proceedings pending before that court
between Zino Davidoff SA and A & G Imports Ltd (C-414/99),
between Levi Strauss & Co., Levi Strauss (UK) Ltd and Tesco
Stores Ltd, Tesco plc (C-415/99), and between Levi Strauss &
Co., Levi Strauss (UK) Ltd v Costco Wholesale UK Ltd, formerly
Costco UK Ltd (C-410/99) — on the interpretation of Article 7
of First Council Directive 89/104/EEC of 21 December 1988
to approximate the laws of the Member States relating to trade
marks (OJ 1989 L 40, p. 1), as amended by the Agreement on

the European Economic Area of 2 May 1992 (OJ 1994 L 1,
p. 3) — the Court, composed of: G.C. Rodrı´guez Iglesias,
President, P. Jann, N. Colneric and S. von Bahr (Presidents of
Chambers), C. Gulmann (Rapporteur), D.A.O. Edward, A. La
Pergola, J.-P. Puissochet, L. Sevo´ n, V. Skouris and C.W.A. Tim-
mermans, Judges; C. Stix-Hackl, Advocate General; L. Hewlett,
Administrator, for the Registrar, has given a judgment on
20 November 2001, in which it has ruled:

1. On a proper construction of Article 7(1) of First Council
Directive 89/104/EEC of 21 December 1988 to approximate
the laws of the Member States relating to trade marks, as
amended by the Agreement on the European Economic Area of
2 May 1992, the consent of a trade mark proprietor to the
marketing within the European Economic Area of products
bearing that mark which have previously been placed on the
market outside the European Economic Area by that proprietor
or with his consent may be implied, where it follows from facts
and circumstances prior to, simultaneous with or subsequent to
the placing of the goods on the market outside the European
Economic Area which,
in the view of the national court,
unequivocally demonstrate that the proprietor has renounced
his right to oppose placing of the goods on the market within
the European Economic Area.

2.

Implied consent cannot be inferred:

— from the fact that the proprietor of the trade mark has not
communicated to all subsequent purchasers of the goods
placed on the market outside the European Economic
Area his opposition to marketing within the European
Economic Area;

— from the fact that the goods carry no warning of a
prohibition of their being placed on the market within the
European Economic Area;

— from the fact that the trade mark proprietor has transferred
the ownership of the products bearing the trade mark
without imposing any contractual reservations and that,
according to the law governing the contract, the property
right transferred includes, in the absence of such reser-
vations, an unlimited right of resale or, at the very least,
a right to market the goods subsequently within the
European Economic Area.

3. With regard to exhaustion of
exclusive right, it is not relevant:

the trade mark proprietor’s

— that the importer of goods bearing the trade mark is not
aware that the proprietor objects to their being placed on
the market in the European Economic Area or sold there
by traders other than authorised retailers, or