Judgment of the Court of 6 May 2003 in Case C-104/01 (Reference for a preliminary ruling from the Hoge Raad der Nederlanden): Libertel Groep BV v Benelux-Merkenbureau, (Trade marks — Approximation of laws — Directive 89/104/EEC — Signs capable of constituting a trade mark— Distinctive character — Colour per se — Orange)
Date: 2003-06-21
Institutions: Court of Justice
Subjects: approximation of laws, interpretation of the law, trade mark, trade-mark law

C 146/6

EN

Official Journal of the European Union

21.6.2003

JUDGMENT OF THE COURT

(Fifth Chamber)

of 10 April 2003

In Joined Cases C-20/01 and C-28/01: Commission of the
European Communities v Federal Republic of Germany (1)

its obligations —
(Failure by a Member State to fulfil
Admissibility — Legal interest in bringing proceedings —
Directive 92/50/EEC — Procedures for the award of public
service contracts — Negotiated procedure without prior
publication of a contract notice — Conditions)

(2003/C 146/09)

(Language of the case: German)

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

In Joined Cases C-20/01 and C-28/01, Commission of the
European Communities (Agent: J. Schieferer) v Federal Repub-
lic of Germany (Agent: W.-D. Plessing, assisted by H.-J. Prieß)
supported by United Kingdom of Great Britain and Northern
Ireland (Agent: R. Magrill, assisted by R. Williams, barrister):
Applications for declarations that:

— by failing to invite tenders for the award of the contract
for the collection of waste water in the Municipality of
Bockhorn (Germany) and to publish notice of the results
of the procedure for the award of the contract in the
Supplement to the Official Journal of the European
Communities, the Federal Republic of Germany, at the
time of the award of that public service contract, failed to
fulfil its obligations under Article 8 in conjunction with
Article 15(2) and Article 16(1) of Council Directive 92/
50/EEC of 18 June 1992 relating to the coordination of
procedures for the award of public service contracts (OJ
1992 L 209, p. 1);

— at the time of the award of a public service contract, the
Federal Republic of Germany failed to fulfil its obligations
under Article 8 and Article 11(3)(b) of Directive 92/50
by virtue of
the fact that the City of Braunschweig
(Germany) awarded a contract for waste disposal by
negotiated procedure without prior publication of a
contract notice, although the criteria laid down by
Article 11(3) for an award of a contract by privately
negotiated procedure without a Community-wide invi-
tation to tender had not been met,

the Court (Fifth Chamber), composed of: M. Wathelet, Presi-
dent of the Chamber, D. A. O. Edward, A. La Pergola, P. Jann
(Rapporteur) and A. Rosas, Judges; L. A. Geelhoed, Advocate
General; M.-F. Contet, Administrator, for the Registrar, has
given a judgment on 10 April 2003, in which it:

1. Declares that since the Municipality of Bockhorn (Germany)
failed to invite tenders for the award of the contract for the
collection of its waste water and failed to publish notice of the
results of the procedure for the award of the contract in the
Supplement to the Official Journal of the European Communi-
ties, the Federal Republic of Germany, at the time of the award
of that public service contract, failed to fulfil its obligations
under Article 8 in conjunction with Article 15(2) and
Article 16(1) of Council Directive 92/50/EEC of 18 June
1992 relating to the coordination of procedures for the award
of public service contracts;

2. Declares that since the City of Braunschweig (Germany)
awarded a contract for waste disposal by negotiated procedure
without prior publication of a contract notice, although the
criteria laid down in Article 11(3) of Directive 92/50 for an
award by privately negotiated procedure without a Community-
wide invitation to tender had not been met, the Federal Republic
of Germany, at the time of the award of that public service
contract, failed to fulfil its obligations under Article 8 and
Article 11(3)(b) of that directive;

3. Orders the Federal Republic of Germany to pay the costs;

4. Orders the United Kingdom of Great Britain and Northern

Ireland to bear its own costs.

(1) OJ C 61 of 24.2.2001.

JUDGMENT OF THE COURT

of 6 May 2003

in Case C-104/01 (Reference for a preliminary ruling from
the Hoge Raad der Nederlanden): Libertel Groep BV v
Benelux-Merkenbureau, (1)

(Trade marks — Approximation of laws — Directive 89/
104/EEC — Signs capable of constituting a trade mark—
Distinctive character — Colour per se — Orange)

(2003/C 146/10)

(Language of the case: Dutch)

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

In Case C-104/01: Reference to the Court under Article 234
EC by the Hoge Raad der Nederlanden (Netherlands) for a
preliminary ruling in the proceedings pending before that
court between Libertel Groep BV and Benelux-Merkenbureau,
on the interpretation of Article 3 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,

21.6.2003

EN

Official Journal of the European Union

C 146/7

p. 1), the Court, composed of: J.-P. Puissochet, President of the
Sixth Chamber, acting for the President, M. Wathelet and
C. W. A. Timmermans, Presidents of Chambers, C. Gulmann,
D. A. O. Edward, P.
Jann, F. Macken, S. von Bahr and
J. N. Cunha Rodrigues (Rapporteur), Judges; P. Léger, Advocate
General; M.-F. Contet, Principal Administrator, for the Regis-
trar, has given a judgment on 6 May 2003, in which it has
ruled:

1. A colour per se, not spatially delimited, may, in respect of
certain goods and services, have a distinctive character within
the meaning of Article 3(1)(b) and Article 3(3) of First Council
Directive 89/104/EEC of 21 December 1988 to approximate
the laws of the Member States relating to trade marks, provided
that, inter alia, it may be represented graphically in a way that
is clear, precise, self-contained, easily accessible,
intelligible,
durable and objective. The latter condition cannot be satisfied
merely by reproducing on paper the colour in question, but may
be satisfied by designating that colour using an internationally
recognised identification code.

2.

In assessing the potential distinctiveness of a given colour as a
trade mark, regard must be had to the general interest in not
unduly restricting the availability of colours for the other traders
who offer for sale goods or services of the same type as those in
respect of which registration is sought.

3. A colour per se may be found to possess distinctive character
within the meaning of Article 3(1)(b) and Article 3(3) of
Directive 89/104, provided that, as regards the perception of
the relevant public, the mark is capable of
identifying the
product or service for which registration is sought as originating
from a particular undertaking and distinguishing that product
or service from those of other undertakings.

4.

5.

The fact that registration as a trade mark of a colour per se is
sought for a large number of goods or services, or for a specific
product or service or for a specific group of goods or services, is
relevant,
together with all the other circumstances of the
particular case, to assessing both the distinctive character of the
colour in respect of which registration is sought, and whether
its registration would run counter to the general interest in not
unduly limiting the availability of colours for the other operators
who offer for sale goods or services of the same type as those in
respect of which registration is sought.

In assessing whether a trade mark has distinctive character
within the meaning of Article 3(1)(b) and Article 3(3) of
Directive 89/104, the competent authority for registering trade
marks must carry out an examination by reference to the actual
situation, taking account of all the circumstances of the case
and in particular any use which has been made of the mark.

( 1) OJ C 200 of 14.7.2001.

JUDGMENT OF THE COURT

(Fifth Chamber)

of 8 May 2003

in Case C-111/01 (Reference for a preliminary ruling from
the Oberster Gerichtshof): Gantner Electronic GmbH v
Basch Exploitatie Maatschappij BV (1)

(Brussels Convention — Article 21 — Lis pendens — Set-
off)

(2003/C 146/11)

(Language of the case: German)

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

In Case C-111/01: Reference to the Court under the Protocol
of 3 June 1971 on the interpretation by the Court of Justice of
the Convention of 27 September 1968 on Jurisdiction and the
Enforcement of Judgments in Civil and Commercial Matters
by the Oberster Gerichtshof (Austria) for a preliminary ruling
in the proceedings pending before that court between Gantner
Electronic GmbH and Basch Exploitatie Maatschappij BV,
on the interpretation of Article 21 of the abovementioned
Convention of 27 September 1968 (OJ 1972 L 299, p. 32), as
amended by the Convention of 9 October 1978 on the
accession of the Kingdom of Denmark, Ireland and the United
Kingdom of Great Britain and Northern Ireland (OJ 1978
L 304, p. 1, and — amended text — p. 77), by the Convention
of 25 October 1982 on the accession of the Hellenic Republic
(OJ 1982 L 388, p. 1), by the Convention of 26 May 1989 on
the accession of the Kingdom of Spain and the Portuguese
Republic (OJ 1989 L 285, p. 1) and by the Convention of
29 November 1996 on the accession of the Republic of
Austria, the Republic of Finland and the Kingdom of Sweden
(OJ 1997 C 15, p. 1), the Court (Fifth Chamber), composed
of: M. Wathelet (Rapporteur), President of
the Chamber,
C.W.A. Timmermans, A. La Pergola, P. Jann and S. von Bahr,
Judges; P. Léger, Advocate General; M.-F. Contet, Principal
Administrator, for the Registrar, has given a judgment on
8 May 2003, in which it has ruled:

Article 21 of the Convention of 27 September 1968 on Jurisdiction
and the Enforcement of Judgments in Civil and Commercial Matters,
as amended by the Convention of 9 October 1978 on the accession
of the Kingdom of Denmark, Ireland and the United Kingdom of
Great Britain and Northern Ireland, by the Convention of 25 October
1982 on the accession of the Hellenic Republic, by the Convention
of 26 May 1989 on the accession of the Kingdom of Spain and the
Portuguese Republic, and by the Convention of 29 November 1996
on the accession of the Republic of Austria, the Republic of Finland
and the Kingdom of Sweden, must be construed as meaning that, in
order to determine whether two claims brought between the same
parties before the courts of different Contracting States have the same