Source: EURLEX
Language: en
Format: md

29.9.2001 EN Official Journal of the European Communities C 275/7

**Action brought on 16 July 2001 by the Commission of** **Reference for a preliminary ruling by the Hoge Raad der**
**the European Communities against the Council of the** **Nederlanden by judgment of that court of 13 July 2001 in**
**European Union** **the case of Shield Mark B.V. against Joost Kist, trading as**
**Memex**

**(Case C-281/01)**
**(Case C-283/01)**

(2001/C 275/13)
(2001/C 275/14)

Reference has been made to the Court of Justice of the
An action against the Council of the European Union was
European Communities by judgment of the Hoge Raad der
brought before the Court of Justice of the European CommuniNederlanden (Netherlands Supreme Court) of 13 July 2001,
ties on 16 July 2001 by the Commission of the European
received at the Court Registry on 18 July 2001, for a
Communities, represented by Mr Hendrik van Lier and
preliminary ruling in the case of Shield Mark B.V. v Joost Kist,
Mr Bernd Martenczuk, acting as agents, with an address for
trading as Memex — on the following questions:
service in Luxembourg.

1. (a) Must Article 2 of the First Council Directive
89/104/EEC( [1] ) of 21 December 1988 to approxiThe Applicant requests that the Court should:
mate the laws of the Member States relating to trade
marks be interpreted as precluding sounds or noises

—
annul decision 2001/469/EC of the Council of 14 May from being regarded as trade marks?
2001, concerning the conclusion on behalf of the European Community of the Agreement between the Govern- (b) If the answer to question 1(a) is in the negative, does
ment of the United States of America and the European the system established by the Directive require that
Community on the coordination of energy-efficient label- sounds or noises should be regarded as trade marks?
ling programs for office equipment( [1] );
2. (a) If the answer to question 1(a) is in the negative,
— what requirements does the Directive lay down for
order the Council to pay the costs.
sound marks as regards the reference in Article 2 to
the need for the sign to be capable of being
represented graphically and, in conjunction therewith, as regards the way in which the registration of
_Pleas in law and main arguments_ such a trade mark must take place?

(b) In particular, are the requirements referred to in (a)
The proposal submitted by the Commission to the Council for satisfied if the sound or the noise is registered in the
the conclusion of the Energy Star Agreement was based on form of:
Article 133 EC in conjunction with Article 300 EC. Amending

—
the Commission’s proposal, the Council decided to base its musical notation;
decision concerning the conclusion of the aforementioned
Agreement not on Article 133, but on Article 175(1) in — an onomatopoeic description in words;
conjunction with Article 300 EC.

—
a description in words in some other way;

—
The Commission considers that, given its aims and content, a graphical representation such as a spectrothe Energy Star Agreement falls entirely within the scope of gram or sonogram;
the Community’s common commercial policy and that its
conclusion should have been based on Article 133. The —
a sound recording medium annexed to the
decision concerning the conclusion of the Agreement should
registration form;
not, therefore, have been based on Article 175(1), which
concerns measures adopted in the field of the Community’s —
a digital recording that may be listened to on
environmental policy. The Commission considers the choice
the internet;
of the legal basis by the Council for the conclusion of the
Agreement to be erroneous, and the attached decision to be —
a combination of those methods;
illegal.

—
some other method, and if so, which?

( [1] ) OJ L 172, 26.06.2001, p. 1.
( [1] ) OJ 1989 L 40, p. 1.