Case C-488/07: Reference for a preliminary ruling from Court of Session (Scotland), Edinburgh (United Kingdom) made on 5 November 2007 — Royal Bank of Scotland plc v The Commissioners of Her Majesty's Revenue & Customs
Date: 2007-11-05
Institutions: Court of Justice
Subjects: VAT, goods and services, interpretation of the law, provision of services, tax relief, tax system

12.1.2008

EN

Official Journal of the European Union

C 8/9

b) it does not affect the sale of the products under the well-

known registered mark: and

c) it does not jeopardize the essential function of the regis-
tered trade mark as a guarantee of origin and does not
harm the reputation of that mark whether by tarnishment
of its image, or dilution or in any other way; and

Reference for a preliminary ruling from Court of Session
(Scotland),
on
5 November 2007 — Royal Bank of Scotland plc v The
Commissioners of Her Majesty's Revenue & Customs

(United Kingdom) made

Edinburgh

(Case C-488/07)

(2008/C 8/16)

d) it plays a significant role in the promotion of the trader's

product

Language of the case: English

does that use fall within Article 5(1)(a) of Directive 89/104?

3 In the context of Article 3a(g) of the Misleading Advertising
Directive (84/450) as amended by the Comparative Adver-
tising Directive (97/55), what is the meaning of ‘take unfair
advantage of' and in particular where a trader in a compar-
ison list compares his product with a product under a well-
known trade mark, does he thereby take unfair advantage of
the reputation of the well-known mark’?

4 In the context of Article 3a(h) of the said Directive what is
the meaning of ‘presenting goods or services as imitations or
replicas’ and in particular does this expression cover the case
where, without in any way causing confusion or deception, a
party merely truthfully says that his product has a major
characteristic (smell) like that of a well-known product which
is protected by a trade mark?

5 Where a trader uses a sign which is similar to a registered
trade mark which has a reputation, and that sign is not
confusingly similar to the trade mark, in such a way that

(a) the essential

function of

the registered trade mark of
providing a guarantee of origin is not impaired or put at
risk;

(b) there is no tarnishing or blurring of the registered trade
mark or its reputation or any risk of either of these;

(c) the trade mark owner's sales are not impaired: and

(d) the trade mark owner is not deprived of any of

the
reward for promotion, maintenance or enhancement of
his trade mark;

(e) But the trader gets a commercial advantage from the use
of his sign by reason of its similarity to the registered
mark

does that use amount to the taking of ‘an unfair advantage’ of
the reputation of the registered mark within the meaning of
Article 5(2) of the Trade Mark Directive?

Referring court

Court of Session (Scotland), Edinburgh

Parties to the main proceedings

Applicant: Royal Bank of Scotland plc

Defendan: The Commissioners of Her Majesty's Revenue &
Customs

Questions referred

1. Does the second paragraph of Article 19(1) of the Sixth VAT
Directive 77/388/EEC (1) require the proportion deductible
by a taxable person under Article 17(5) to be determined on
an annual basis, fixed as a percentage and rounded up to a
figure not exceeding the next unit where:

a. that proportion is a proportion which has been deter-
mined for a sector of the business of the taxable person
in accordance with either item (a) or (b) of the third sub-
paragraph of Article 17(5); and/or

b. that proportion is a proportion which has been deter-
mined on the basis of the use of all or part of goods and
services by the taxable person in accordance with item (c)
of the third subparagraph of Article 17(5); and/or

c. that proportion is a proportion which has been deter-
mined in respect of all goods and services used by the
taxable person for all transactions referred to in the first
paragraph of Article 17(5), in accordance with item (d) of
the third subparagraph thereof?

2. Does the second subparagraph of

the said Article 19(1)
permit Member States to require the proportion deductible
by a taxable person under Article 17(5) to be rounded up to
a figure other than the next highest whole number?

(1) OJ L 145 p. 1.