Case C-252/07: Judgment of the Court (First Chamber) of 27 November 2008 (reference for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division) — United Kingdom) — Intel Corporation Inc. v Cpm United Kingdom Limited (Directive 89/104/EEC — Trade marks — Article 4(4)(a) — Trade marks with a reputation — Protection against the use of a later identical or similar mark — Use which takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier trade mark)
Date: 2008-11-27
Institutions: Court of Justice
Subjects: brand name, interpretation of the law, patents licence, trade mark, trade-mark law

C 19/4

EN

Official Journal of the European Union

24.1.2009

Operative part of the judgment

2. Orders the Kingdom of the Netherlands to pay the costs.

The Court:

1. Declares that, by failing to adopt, within the prescribed period, the
laws, regulations and administrative provisions necessary to comply
with Directive 2003/35/EC of the European Parliament and of the
Council of 26 May 2003 providing for public participation in
respect of the drawing up of certain plans and programmes relating
to the environment and amending with regard to public participa-
tion and access to justice Council Directives 85/337/EEC and
96/61/EC, the United Kingdom of Great Britain and Northern
Ireland has failed to fulfil its obligations under that directive;

2. Orders the United Kingdom of Great Britain and Northern Ireland

to pay the costs.

(1) OJ C 170, 21.7.2007.

Judgment of the Court (Third Chamber) of 4 December
the European Communities v
2008 — Commission of

Kingdom of the Netherlands

(Case C-249/07) (1)

to

fulfil

of a Member State

obligations —
(Failure
Articles 28 EC and 30 EC — Directive 92/43/EC — Measure
having equivalent
the
planting of oysters and mussels of native species from other
Member States — Justification — Protection of the life of
animals — Maintenance of biodiversity and conservation of
fish species in the interest of fisheries)

effect — Prior authorisation for

(2009/C 19/06)

Language of the case: Dutch

(1) OJ C 183, 4.8.2007.

Judgment of the Court (First Chamber) of 27 November
2008 (reference for a preliminary ruling from the Court of
Appeal
(Civil Division) — United
Kingdom) — Intel Corporation Inc. v Cpm United
Kingdom Limited

(England and Wales)

(Case C-252/07) (1)

(Directive 89/104/EEC — Trade marks — Article 4(4)(a) —
Trade marks with a reputation — Protection against the use
of a later identical or similar mark — Use which takes or
would take unfair advantage of, or is or would be detrimental
to, the distinctive character or the repute of the earlier trade
mark)

(2009/C 19/07)

Language of the case: English

Referring court

Court of Appeal (England and Wales) (Civil Division)

Parties to the main proceedings

Applicant: Intel Corporation Inc.

Defendant: Cpm United Kingdom Limited

Parties

Applicant: Commission of the European Communities (repre-
sented by: M. Konstantinidis and S. Noe, acting as Agents)

Re:

Defendant: Kingdom of the Netherlands (represented by: C.M.
Wissels and C. ten Dam, Agents)

Re:

Failure to fulfil obligations — Infringement of Articles 28 EC
and 30 EC — System of prior authorisation for the planting of
oysters and mussels from other Member States in Netherlands
coastal waters

Operative part of the judgment

The Court:

1. Declares that, by instituting a system of prior authorisation for the
in Netherlands coastal waters, of oysters and mussels
planting,
coming lawfully from other Member States and being of species
native to the Netherlands, the Kingdom of the Netherlands has
failed to fulfil its obligations under Articles 28 EC and 30 EC;

Reference for a preliminary ruling — Court of Appeal (Civil
Division) — Interpretation of Articles 4(4)(a) and 5(2) of First
Council Directive 89/104/EEC of 21 December 1988 to approx-
imate the laws of the Member States relating to trade marks
(OJ 1989 L 40, p. 1) — Earlier mark having a reputation —
Criteria to be taken into account in order to establish whether
there is a link within the meaning of Case C-408/01 Adidas-
Salomon AG and Adidas-Benelux BV

Operative part of the judgment

1. Article 4(4)(a) of First Council Directive 89/104/EEC of
21 December 1988 to approximate the laws of the Member States
relating to trade marks must be interpreted as meaning that
whether there is a link, within the meaning of Case C-408/01
Adidas-Salomon and Adidas Benelux, between the earlier mark
with a reputation and the later mark must be assessed globally,
taking into account all factors relevant to the circumstances of the
case.

24.1.2009

EN

Official Journal of the European Union

C 19/5

2. The fact that, for the average consumer, who is reasonably well
informed and reasonably observant and circumspect, the later mark
calls the earlier mark with a reputation to mind is tantamount to
the existence of such a link, within the meaning of Adidas-
Salomon and Adidas Benelux, between the conflicting marks.

— proof that the use of the later mark is or would be detrimental
to the distinctive character of the earlier mark requires evidence
of a change in the economic behaviour of the average consumer
of the goods or services for which the earlier mark was regis-
tered consequent on the use of the later mark, or a serious like-
lihood that such a change will occur in the future.

3. The fact that:

— the earlier mark has a huge reputation for certain specific types

of goods or services, and

(1) OJ C 183, 4.8.2007.

— those goods or services and the goods or services for which the
to a

registered are dissimilar or dissimilar

later mark is
substantial degree, and

— the earlier mark is unique in respect of any goods or services,

does not necessarily imply that there is a link, within the meaning
of Adidas-Salomon and Adidas Benelux, between the conflicting
marks.

4. Article 4(4)(a) of Directive 89/104 must be

interpreted as
meaning that whether a use of the later mark takes or would take
unfair advantage of, or is or would be detrimental to, the distinctive
character or the repute of the earlier mark must be assessed globally,
taking into account all factors relevant to the circumstances of the
case.

5. The fact that:

Judgment of the Court (Second Chamber) of 4 December
2008 (reference for a preliminary ruling from the Korkein
hallinto-oikeus — Finland) — Lahti Energia Oy

(Case C-317/07) (1)

(Directive 2000/76/EC — Incineration of waste — Purifica-
tion and combustion — Crude gas produced from waste —
Definition of waste — Incineration plant — Co-incineration
plant)

(2009/C 19/08)

Language of the case: Finnish

— the earlier mark has a huge reputation for certain specific types

of goods or services, and

Referring court

— those goods or services and the goods or services for which the
to a

registered are dissimilar or dissimilar

later mark is
substantial degree, and

— the earlier mark is unique in respect of any goods or services,

and

Korkein hallinto-oikeus

Parties in the main proceedings

Lahti Energia Oy

— for the average consumer, who is reasonably well informed and
reasonably observant and circumspect, the later mark calls the
earlier mark to mind,

Re:

is not sufficient to establish that the use of the later mark takes or
would take unfair advantage of, or is or would be detrimental to,
the distinctive character or the repute of the earlier mark, within the
meaning of Article 4(4)(a) of Directive 89/104.

6. Article 4(4)(a) of Directive 89/104 must be

interpreted as

meaning that:

Reference for a preliminary ruling — Korkein hallinto-oikeus —
Interpretation of Article 3(1),
and (5) of Directive
2000/76/EC of the European Parliament and of the Council of
4 December 2000 on the incineration of waste (OJ 2000 L 332,
p. 91) — Purification and combustion in a boiler of a power
plant — Concept of waste — Concepts of incineration plant
and co-incineration plant

(4)

— the use of the later mark may be detrimental to the distinctive
character of the earlier mark with a reputation even if that
mark is not unique;

— a first use of the later mark may suffice to be detrimental to

the distinctive character of the earlier mark;

Operative part of the judgment

1) The definition of ‘waste’ in Article 3(1) of Directive 2000/76/EC
of the European Parliament and of the Council of 4 December
2000 on the
cover gaseous
incineration of waste does not
substances;