Case C-533/06: Judgment of the Court (First Chamber) of 12 June 2008 (reference for a preliminary ruling from the Court of Appeal, United Kingdom) — O2 Holdings Limited, O2 (UK) Limited v Hutchison 3G UK Limited (Trade marks — Directive 89/104/EEC — Article 5(1) — Exclusive rights of the trade mark proprietor — Use of a sign identical with, or similar to, a mark in a comparative advertisement — Limitation of the effects of a trade mark — Comparative advertising — Directives 84/450/EEC and 97/55/EC — Article 3a(1) — Conditions under which comparative advertising is permitted — Use of a competitor's trade mark or of a sign similar to that mark)
Date: 2008-06-12
Institutions: Court of Justice
Subjects: brand name, comparative advertising, competition, interpretation of the law, trade-mark law

15.8.2008

EN

Official Journal of the European Union

C 209/9

Parties to the main proceedings

Defendant: Hutchison 3G UK Limited

Applicant: Skatteverket

Defendant: Gourmet Classic Ltd

Re:

Reference for a preliminary ruling — Regeringsrätten — Inter-
pretation of the first indent of Article 20 of Council Directive
92/83/EEC of 19 October 1992 on the harmonisation of the
structures of excise duties on alcohol and alcoholic beverages
(OJ 1992 L 316, p. 21) — Exemption from duty — Product
based on wine, with an alcoholic content of 4.8 % per 100 kg
of finished product, intended for cooking

Operative part of the judgment

The alcohol contained in cooking wine is, if it has an alcoholic strength
exceeding 1.2 % by volume, to be classified as ethyl alcohol as referred
to in the first indent of Article 20 of Council Directive 92/83/EEC of
19 October 1992 on the harmonisation of the structures of excise
duties on alcohol and alcoholic beverages.

(1) OJ C 326, 30.12.2006.

Judgment of the Court (First Chamber) of 12 June 2008
(reference for a preliminary ruling from the Court of
Appeal, United Kingdom) — O2 Holdings Limited, O2
(UK) Limited v Hutchison 3G UK Limited

(Case C-533/06) (1)

(Trade marks — Directive 89/104/EEC — Article 5(1) —
Exclusive rights of the trade mark proprietor — Use of a sign
identical with, or similar to, a mark in a comparative adver-
tisement — Limitation of the effects of a trade mark —
Comparative advertising — Directives 84/450/EEC and
97/55/EC — Article 3a(1) — Conditions under which
comparative advertising is permitted — Use of a competitor's
trade mark or of a sign similar to that mark)

(2008/C 209/12)

Language of the case: English

Referring court

Court of Appeal

Parties to the main proceedings

Applicant: O2 Holdings Limited, O2 (UK) Limited

Re:

Reference for a preliminary ruling — Court of Appeal — Inter-
pretation of Article 5(1)(a) and (b) of 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)
and Article 3a of Council Directive 84/450/EEC of 10 September
1984 relating to the approximation of the laws, regulations and
administrative provisions of
the Member States concerning
misleading advertising (OJ 1984 L 250, p. 17) — Use of a
competitor's trade mark in an advertisement for the purposes of
comparing the characteristics of the goods or services sold by
the advertiser with those of the competitor

Operative part of the judgment

1. Article 5(1) and (2) of First Council Directive 89/104/EEC of
21 December 1988 to approximate the laws of the Member States
relating to trade marks and Article 3a(1) of Council Directive
84/450/EEC of 10 September 1984 concerning misleading and
comparative advertising, as amended by Directive 97/55/EC of the
European Parliament and of the Council of 6 October 1997, must
be interpreted to the effect that the proprietor of a registered trade
mark is not entitled to prevent the use by a third party of a sign
identical with, or similar to, his mark, in a comparative advertise-
ment which satisfies all the conditions, laid down in Article 3a(1)
of Directive 84/450, under which comparative advertising is
permitted.

However, where the conditions required in Article 5(1)(b) of Direc-
tive 89/104 to prevent the use of a sign identical with, or similar
to, a registered trade mark are met, a comparative advertisement in
which that sign is used cannot satisfy the condition, laid down in
Article 3a(1)(d) of Directive 84/450, as amended by Directive
97/55, under which comparative advertising is permitted.

2. Article 5(1)(b) of Directive 89/104 is

to be interpreted as
meaning that
the proprietor of a registered trade mark is not
entitled to prevent the use by a third party, in a comparative adver-
tisement, of a sign similar to that mark in relation to goods or
services identical with, or similar to, those for which that mark was
registered where such use does not give rise to a likelihood of confu-
sion on the part of the public, and that is so irrespective of whether
or not the comparative advertisement satisfies all the conditions laid
down in Article 3a of Directive 84/450, as amended by Directive
97/55, under which comparative advertising is permitted

(1) OJ C 56, 10.3.2007.