Case C-16/06 P: Judgment of the Court (First Chamber) of 18 December 2008 — Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Orange A/S (Appeals — Community trade mark — Regulation (EC) No 40/94 — Articles 8 and 63 — Word mark MOBILIX — Opposition by the proprietor of the Community and national word mark OBELIX — Partial rejection of the opposition — Reformatio in pejus — Counteraction theory — Modification of the subject-matter of the dispute — Documents included as an annex to the application as new evidence before the Court of First Instance)
Date: 2008-12-18
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), appeal, publisher, trade-mark law

C 44/2

EN

Official Journal of the European Union

21.2.2009

V

(Announcements)

COURT PROCEEDINGS

COURT OF JUSTICE

Judgment of the Court (Second Chamber) of 22 December
2008 (reference for a preliminary ruling from the Oberster
Gerichtshof (Austria)) — The Wellcome Foundation Ltd v
Paranova Pharmazeutika Handels GmbH

(Case C-276/05) (1)

(Trade marks — Pharmaceutical products — Repackaging —
Parallel imports — Substantial change in appearance of the
packaging — Obligation of prior notice)

to damage the reputation of
proprietor.

the trade mark or

that of

its

2. Article 7(2) of Directive 89/104, as amended by the Agreement
on the European Economic Area of 2 May 1992, is to be inter-
preted as meaning that it is for the parallel importer to furnish to
the proprietor of the trade mark the information which is necessary
and sufficient to enable the latter to determine whether the repacka-
ging of the product under that trade mark is necessary in order to
market it in the Member State of importation.

(2009/C 44/02)

Language of the case: German

(1) OJ C 217, 3.9.2005.

Referring court

Oberster Gerichtshof

Parties to the main proceedings

Applicant: The Wellcome Foundation Ltd

Defendant: Paranova Pharmazeutika Handels GmbH

Judgment of the Court (First Chamber) of 18 December
2008 — Les Éditions Albert René Sàrl v Office for
Harmonisation in the Internal Market (Trade Marks and
Designs), Orange A/S

(Case C-16/06 P) (1)

Re:

Reference for a preliminary ruling — Oberster Gerichtshof —
Interpretation of Article 7 of Directive 89/104/EEC: First
Council Directive of 21 December 1988 to approximate the
laws of the Member States relating to trade marks (OJ 1989
L 40, p. 1) — Repackaging of a pharmaceutical product
imported in parallel — Substantial change in the appearance of
the packaging — Extent of the obligation of prior notification

(Appeals — Community trade mark — Regulation (EC)
No 40/94 — Articles 8 and 63 — Word mark MOBILIX —
Opposition by the proprietor of the Community and national
word mark OBELIX — Partial rejection of the opposition —
Reformatio in pejus — ‘Counteraction’ theory — Modification
of the subject-matter of the dispute — Documents included as
an annex to the application as new evidence before the Court
of First Instance)

Operative part of the judgment

1. Article 7(2) of Council Directive 89/104/EEC of 21 December
1988 to approximate the laws of the Member States relating to
trade marks, as amended by the Agreement on the European
Economic Area of 2 May 1992, is to be interpreted as meaning
that, where it is established that repackaging of the pharmaceutical
product is necessary for further marketing in the Member State of
importation, the presentation of the packaging should be assessed
only against the condition that it should not be such as to be liable

(2009/C 44/03)

Language of the case: English

Parties

Appellant: Les Éditions Albert René Sàrl
J. Pagenberg, Rechtsanwalt)

(represented by:

21.2.2009

EN

Official Journal of the European Union

C 44/3

Other parties to the proceedings: Office for Harmonisation in the
Internal Market (Trade Marks and Designs) (represented by: G.
Schneider, acting as Agent), Orange A/S (represented by:
J. Balling, advokat)

Party to the main proceedings

Cartesio Oktató és Szolgáltató Bt

Re:

the Court of First Instance
Appeal against the judgment of
(Third Chamber) of 27 October 2005 in Case T-336/03 Editions
Albert René v OHIM — Orange (MOBILIX) by which that Court
dismissed an action for annulment brought by the proprietor of
the Community and national word mark ‘OBELIX’ in respect of
certain goods and services classed inter alia in Classes 9, 16, 28,
35, 41 and 42 against Decision R 559/2002-4 of the Fourth
Board of Appeal of OHIM of 14 July 2003 rejecting in part the
application brought against the decision of the Opposition Divi-
sion rejecting the opposition proceeding brought against the
application to register the word mark MOBILIX in respect of
certain goods and services classed in Classes 9, 16, 35, 37, 38
and 42

Operative part of the judgment

The Court:

1. Dismisses the appeal;

2. Orders Les Éditions Albert René Sàrl to pay the costs.

(1) OJ C 143, 17.6.2006.

Judgment of the Court (Grand Chamber) of 16 December
2008 (reference for a preliminary ruling from the Szegedi
Ítélőtábla (Republic of Hungary)) — In the proceedings in
the case of Cartesio Oktató és Szolgáltató Bt

(Case C-210/06) (1)

keeping

(Transfer of a company seat to a Member State other than the
Member State of incorporation — Application for amendment
of the entry regarding the company seat in the commercial
register — Refusal — Appeal against a decision of a court
entrusted with
register —
the
Article 234 EC — Reference for a preliminary ruling —
Admissibility — Definition of ‘court or tribunal’ — Defini-
tion of ‘a court or tribunal against whose decisions there is no
judicial remedy under national law’ — Appeal against a deci-
sion making a reference for a preliminary ruling — Jurisdic-
tion of appellate courts to order revocation of such a decision
— Freedom of establishment — Articles 43 EC and 48 EC)

commercial

(2009/C 44/04)

Language of the case: Hungarian

Referring court

Szegedi Ítélőtábla

Re:

Reference for a preliminary ruling — Szegedi Ítélőtábla — Inter-
pretation of Articles 43, 48 and 234 EC — No possibility to
transfer the seat of a company constituted under the law of a
Member State to another Member State without first going into
liquidation in the Member State of origin.

Operative part of the judgment

1. A court such as the referring court, hearing an appeal against a
decision of a lower court, responsible for maintaining the commer-
cial register, rejecting an application for amendment of information
entered in that register, must be classified as a court or tribunal
which is entitled to make a reference for a preliminary ruling under
Article 234 EC, regardless of the fact that neither the decision of
the lower court nor the consideration of the appeal by the referring
court takes place in the context of inter partes proceedings.

2. A court such as the referring court, whose decisions in disputes
such as that in the main proceedings may be appealed on points of
law, cannot be classified as a court or tribunal against whose deci-
sions there is no judicial remedy under national
law, within the
meaning of the third paragraph of Article 234 EC.

3. Where rules of national

law apply which relate to the right of
appeal against a decision making a reference for a preliminary
ruling, and under those rules the main proceedings remain pending
before the referring court in their entirety, the order for reference
alone being the subject of a limited appeal, the second paragraph of
Article 234 EC is to be interpreted as meaning that the jurisdiction
conferred on any national court or tribunal by that provision of the
Treaty to make a reference to the Court for a preliminary ruling
cannot be called into question by the application of those rules,
where they permit the appellate court to vary the order for reference,
to set aside the reference and to order the referring court to resume
the domestic law proceedings.

4. As Community law now stands, Articles 43 EC and 48 EC are to
be interpreted as not precluding legislation of a Member State
under which a company incorporated under
that
Member State may not transfer its seat to another Member State
whilst retaining its status as a company governed by the law of the
Member State of incorporation.

the law of

(1) OJ C 165, 15.7.2006.