Judgment of the Court (Grand Chamber) of 12 April 2005 in Case C-265/03: Reference for a preliminary ruling from the Audiencia Nacional: Igor Simutenkov v Ministerio de Educación y Cultura, Real Federación Española de Fútbol (Communities-Russia Partnership Agreement — Article 23(1) — Direct effect — Conditions relating to employment — Principle of non-discrimination — Football — Limit on the number of professional players having the nationality of non-member countries who may appear on a team in a national competition)
Date: 2005-05-28
Institutions: Court of Justice
Subjects: Russia, cooperation agreement (EU), interpretation of the law, professional sport

28.5.2005

EN

Official Journal of the European Union

C 132/9

It is for the national court to determine whether, in the case in the
main proceedings, such use is necessary, taking account of the
nature of the public for which the product marketed by the third
party in question is intended.

Since Article 6(1)(c) of Directive 89/104 makes no distinction
between the possible intended purposes of products when assessing
the lawfulness of the use of the trade mark, the criteria for asses-
sing the lawfulness of the use of the trade mark with accessories or
spare parts in particular are thus no different from those applicable
to other categories of possible intended purposes for the products.

2. The condition of ‘honest use’ within the meaning of Article 6(1)(c)
of Directive 89/104, constitutes in substance the expression of a
duty to act fairly in relation to the legitimate interests of the trade
mark owner.

The use of the trade mark will not be in accordance with honest
practices in industrial and commercial matters if, for example:

— it is done in such a manner as to give the impression that
there is a commercial connection between the third party and
the trade mark owner;

— it affects the value of the trade mark by taking unfair advan-

tage of its distinctive character or repute;

JUDGMENT OF THE COURT

(Grand Chamber)

of 12 April 2005

in Case C-265/03: Reference for a preliminary ruling from
the Audiencia Nacional: Igor Simutenkov v Ministerio de
Educación y Cultura, Real Federación Española de
Fútbol (1)

(Communities-Russia Partnership Agreement — Article
23(1) — Direct effect — Conditions relating to employment
— Principle of non-discrimination — Football — Limit on
the number of professional players having the nationality of
non-member countries who may appear on a team in a
national competition)

(2005/C 132/16)

— it entails the discrediting or denigration of that mark;

(Language of the case: Spanish)

— or where the third party presents its product as an imitation or
replica of the product bearing the trade mark of which it is
not the owner.

The fact that a third party uses a trade mark of which it is not the
owner in order to indicate the intended purpose of the product
which it markets does not necessarily mean that it is presenting it
as being of the same quality as, or having equivalent properties to,
those of the product bearing the trade mark. Whether there has
been such presentation depends on the facts of the case, and it is
for the referring court to determine whether it has taken place by
reference to the circumstances.

Whether
the product marketed by the third party has been
presented as being of the same quality as, or having equivalent
properties to, the product whose trade mark is being used is a
factor which the referring court must take into consideration when
it verifies that that use is made in accordance with honest practices
in industrial or commercial matters.

3. Where a third party that uses a trade mark of which it is not the
owner markets not only a spare part or an accessory but also the
product itself with which the spare part or accessory is intended to
be used, such use falls within the scope of Article 6(1)(c) of Direc-
tive 89/104 in so far as it is necessary to indicate the intended
purpose of the product marketed by the latter and is made in
accordance with honest practices in industrial and commercial
matters.

In Case C-265/03: reference for a preliminary ruling under
Article 234 EC from the Audiencia Nacional (Spain), made by
decision of 9 May 2003, received at the Court on 17 June
2003, in the proceedings pending before that court between
Igor Simutenkov and Ministerio de Educación y Cultura,
Real Federación Española de Fútbol — the Court (Grand
Chamber), composed of V. Skouris, President, P. Jann, C.W.A.
Timmermans and A. Rosas, Presidents of Chambers, C.
Gulmann, A. La Pergola, J.-P. Puissochet, J. Makarczyk, P. Kūris,
M. Ilešič (Rapporteur), U. Lõhmus, E. Levits and A. Ó Caoimh,
Judges; C. Stix-Hackl, Advocate General; R. Grass, Registrar,
gave a judgment on 12 April 2005, the operative part of
which is as follows:

Article 23(1) of the Agreement on partnership and cooperation estab-
lishing a partnership between the European Communities and their
Member States, of one part, and the Russian Federation, of the other
part, signed in Corfu on 24 June 1994 and approved on behalf of
the Communities by Decision 97/800/ECSC, EC, Euratom: Council
and Commission Decision of 30 October 1997, must be construed
as precluding the application to a professional sportsman of Russian
nationality, who is lawfully employed by a club established in a
Member State, of a rule drawn up by a sports federation of that State
which provides that clubs may field in competitions organised at
national level only a limited number of players from countries which
are not parties to the Agreement on the European Economic Area.

(1) OJ C 171 of 19.07.2003.

(1) OJ C 213 of 06.09.2003.