Case C-259/04: Reference for a preliminary ruling by the High Court of Justice, The Person Appointed by the Lord Chancellor under Section 76 of the Trade Marks Act 1994, on Appeal from the Registrar of Trade Marks, by order of that court dated 26 May 2004, in the case of Elizabeth Emanuel and Continental Shelf 128 Ltd
Date: 2004-08-28
Institutions: Court of Justice
Subjects: brand name, interpretation of the law, patents licence, trade mark, trade-mark law

28.8.2004

EN

Official Journal of the European Union

C 217/13

— Order the French Republic to pay the costs.

Staddon Ltd, and J.C. Caulfield, C.F. Caulfield, K.V. Barnes and
Marshalls Clay Products Ltd, on the following questions:

Pleas in law and main arguments:

The regime for granting licences to service providers estab-
lished in another Member State who do not possess a licence
delivered under comparable conditions in their State of origin
is a purely automatic application of the regime which applies
to service providers established in France and takes no account
the evidence and guarantees already submitted in the
of
country of origin. The French regime's requirement
for a
licence in those conditions goes beyond what is necessary to
safeguard the interests of the performers concerned. Also, the
criterion of the benefit of the agency's activity in the light of
the needs for the engagement of performers gives the Ministre
du travail (Minister for Employment) who is responsible for the
grant or withdrawal of the licences, a wholly discretionary
power to exclude a foreign service provider because of a suffi-
ciency of French agencies holding a licence in France.

The presumption of employment applied to a performing artist
recognised as a service provider established in his Member
State of origin where he usually provides similar services
constitutes a restriction on the free movement of services since
it is liable to prevent or impede the service provider's activities
in another Member State where he lawfully provides similar
services and goes beyond what is necessary to fulfil the objec-
tives which underlie it. Furthermore, the presumption is very
difficult to rebut and has consequences not only as regards the
social security system but also as regards paid holidays and the
supplementary retirement regime. Even if it applies without
distinction to national artists and to those of other Member
States, the presumption is a restriction which is liable to hinder
or make less attractive the activities of performing artists estab-
lished in a Member State where they lawfully provide similar
services and which is disproportionate in relation to the objec-
tive pursued.

Reference for a preliminary ruling by the Court of Appeal
(England and Wales), Civil Division, by order of that court
dated 15 June 2004, in the cases of Michael Jason Clarke
against Frank Staddon Ltd and J.C. Caulfield, C.F. Caulfield
and K.V. Barnes against Marshalls Clay Products Ltd

(Case C-257/04)

(2004/C 217/25)

Reference has been made to the Court of Justice of the Euro-
the Court of Appeal
pean Communities by an order of
(England and Wales), Civil Division dated 15 June 2004, which
was received at the Court Registry on 16 June 2004, for a preli-
minary ruling in the cases of Michael Jason Clarke and Frank

1) Does a contractually binding arrangement between an
employer and a worker, which provides that a specific part
of the wages paid to the worker represents that worker's
‘holiday pay’/ (an arrangement known as rolled up holiday
pay), involve a violation of the worker's right to be paid for
his annual leave under Article 7 of the Working Time Direc-
tive 93/104/EC (1)?

2) Would the answer to question 1 be different if the worker
was paid the same before and after the binding arrangement
in question coming into force so that the effect of the
arrangement was not to provide for additional pay, but,
rather, to attribute part of the wages payable to the worker
to holiday pay?

3) If the answer to question 1 is yes, is it a violation of the
right to paid annual leave under Article 7 for credit to be
given for that payment so as to set this off against the enti-
tlement afforded under the Directive?

4) In order to comply with the obligation under Article 7 of
Directive 93/104/EC to ensure that a worker is entitled to
paid annual leave of at least four weeks, is it necessary for
the payment to be made to the worker in the pay period in
which he takes his annual leave, or is it sufficient to comply
with Article 7 that the payment is made throughout the
year in instalments?

(1) Council Directive 93/104/EC of 23 November 1993 concerning
certain aspects of the organization of working time. OJ L 307,
13.12.1993, p. 18-24

Reference for a preliminary ruling by the High Court of
Justice, The Person Appointed by the Lord Chancellor
under Section 76 of the Trade Marks Act 1994, on Appeal
from the Registrar of Trade Marks, by order of that court
dated 26 May 2004, in the case of Elizabeth Emanuel and
Continental Shelf 128 Ltd

(Case C-259/04)

(2004/C 217/26)

Reference has been made to the Court of Justice of the Euro-
pean Communities by an order of the High Court of Justice,
The Person Appointed by the Lord Chancellor under Section
76 of the Trade Marks Act 1994, on Appeal from the Registrar
of Trade Marks, dated 26 May 2004, which was received at the
Court Registry on 16 June 2004, for a preliminary ruling in
the case of Elizabeth Emanuel and Continental Shelf 128
Limited on the following questions:

C 217/14

EN

Official Journal of the European Union

28.8.2004

ARTICLE 3.1 (g) OF COUNCIL DIRECTIVE 89/104 (1)

under Article 12.2 (b) and, in particular, is it relevant that
the risk of deception is likely to diminish over time?

1. Is a trade mark of such a nature as to deceive the public
and prohibited from registration under Article 3.1 (g) in the
following circumstances:

(a) the goodwill associated with the trade mark has been
assigned together with the business of making the goods
to which the mark relates;

(b) prior to the assignment the trade mark indicated to a
significant proportion of the relevant public that a par-
ticular person was involved in the design or creation of
the goods in relation to which it was used;

(c) after the assignment an application was made by the

assignee to register the trade mark; and

(d) at the time of the application a significant portion of
the relevant public wrongly believed that use of the
trade mark indicated that the particular person was still
involved in the design or creation of the goods in rela-
tion to which the mark was used, and this belief was
likely to affect the purchasing behaviour of that part of
the public?

2. If the answer to question 1 is not unreservedly yes, what
other matters must be taken into consideration in assessing
whether a trade mark is of such a nature as to deceive the
public and prohibited from registration under Article 3.1 (g)
and, in particular, is it relevant that the risk of deception is
likely to diminish over time?

ARTICLE 12.2 (b) OF COUNCIL DIRECTIVE 89/104

3. Is a registered trade mark liable to mislead the public in
consequence of the use made of it by the proprietor or with
his consent and so liable to revocation under Article 12.2
(b) in the following circumstances:

(a) the registered trade mark and the goodwill associated
with it have been assigned together with the business of
making the goods to which the mark relates;

(b) prior to the assignment the trade mark indicated to a
significant proportion of the relevant public that a par-
ticular person was involved in the design or creation of
the goods in relation to which it was used;

(c) after the assignment an application was made to revoke

the registered trade mark; and

(d) at the time of the application a significant portion of
the relevant public wrongly believed that use of the
trade mark indicated that the particular person was still
involved with the design or creation of the goods in
relation to which the mark was used, and this belief was
likely to affect the purchasing behaviour of that part of
the public?

(1) First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade marks.
OJ L 40, 11.2.1989, p. 1-7.

Action brought on 17 June 2004 by the Commission of
the European Communities against the Italian Republic

(Case C-260/04)

(2004/C 217/27)

An action against the Italian Republic was brought before the
Court of Justice of the European Communities on 17 June
2004 by the Commission of the European Communities, repre-
sented by K. Wiedner, C. Cattabriga and L. Visaggio, acting as
Agents.

The applicant claims that the Court should:

— declare that, the Ministry of Finance having renewed 329
licences for the taking of bets on horse races without a
prior competitive tendering procedure, the Italian Republic
has infringed the general principle of transparency and the
obligation to advertise which follow from the provisions of
the EC Treaty on the freedom of establishment in Article
43 et seq. and the freedom to provide services in Article 49
et seq.;

— order the Italian Republic to pay the costs.

Pleas in law and main arguments:

Although licences for the services of collection and acceptance
of bets on horse races do not come within the scope of
Council Directive 92/50/EEC of 18 June 1992 relating to the
coordination of procedures for the award of public service
contracts (1), it is however clear from Case C-324/98 Telaus-
tria (2) that the national authorities which award such licences
are, none the less, bound to comply with the fundamental rules
of the Treaty and, in particular, the principle of non-discrimina-
tion on the ground of nationality implied in the provisions of
the EC Treaty concerning the freedom of establishment and the
freedom to provide services (Article 43 et seq. and Article 49 et
seq. respectively).

The same principles apply both to the award of licences and to
their extension and renewal. In Community law extension or
to the award of a new
renewal of a licence is equivalent
licence, which must therefore comply with that law.

4. If the answer to question 3 is not unreservedly yes, what
other matters must be taken into consideration in assessing
whether a registered trade mark is liable to mislead the
public in consequence of
it by the
proprietor or with his consent and so liable to revocation

the use made of

The Court made it clear in Case C-275/98 Unitron Scandinavia
and 3-S (3) that
the principle of non-discrimination on the
ground of nationality ‘implies, in particular, an obligation of
transparency in order to enable the contracting authority to
satisfy itself that it has been complied with.’