CELEX: C1997/108/28
Language: en
Date: 1997-04-05 00:00:00
Title: Action brought on 14 February 1997 by the Commission of the European Communities against the Italian Republic (Case C-64/97)

5 . 4 . 97                        EN                  Official Journal of the European Communities                                   No C 108/ 15
        purpose of the case described in Article 5 (4 ), are                          to an appreciable extent for the purpose of advertising
        Member States otherwise free to lay down rules on the                         his own business as such by creating a specific
        matter, or does Community law in general, or the                              suggestion of quality ?
        objective and tenor of Directive 89/104/EEC in
        particular, have the effect that Member States are not                   (') OJ No L 40 , 11 . 2 . 1989, p . 1 .
        entirely free in that regard but must comply with
        specific restrictions, and if so which ?
( b ) If someone, without the authorization of the trade                         Action brought on 14 February 1997 by the Commission
        mark proprietor, makes use of that proprietor's trade                    of the European Communities against the Italian Republic
        mark, registered exclusively for specified goods, for                                               ( Case C-64/97)
        the purpose of announcing to the public that he (A )
        carries out repair and maintenance work on the goods                                                  ( 97/C 108/28 )
        which have been placed on the market under that
        trade mark by the proprietor or with his consent, or                     An action against the Italian Republic was brought before
         that he ( B ) is a specialist or is specialized with regard             the Court of Justice of the European Communities on
        to such goods, does this, under the scheme of Article 5                  14 February 1997 by the Commission of the European
         of the Directive, involve :                                             Communities, represented by Paolo Stancanelli, of its
                                                                                 Legal Service, acting as Agents, with an address for service
         (i)       use of the trade mark in relation to goods which              in Luxembourg at the office of Carlos Gomez de la Cruz,
                   are identical to those for which it was registered,           Wagner Centre, Kirchberg.
                   as referred to in Article 5 ( 1 ) ( a );                      The applicant claims that the Court should:
                                                                                 — declare that, by failing to adopt the laws, regulations
         ( ii ) use of that trade mark in relation to services
                   which must be deemed to constitute use of the
                                                                                      or administrative provisions necessary to comply with
                                                                                      Council Directive 93/95/EEC of 29 October 1993
                   trade mark within the meaning of Article 5 ( 1 ) ( a )
                   or use of the trade mark as referred to in Article 5               amending Directive 89/686/EEC on the approximation
                                                                                      of the laws of the Member States relating to personal
                   ( 1 ) ( b ), on the assumption that it can be stated
                                                                                      protective equipment ( PPE ) ( 1 ), the Italian Republic
                   that there is an identity between those services
                                                                                      has failed to fulfil its obligations under the EC Treaty;
                   and the goods for which the trade mark was
                   registered;                                                   — order the Italian Republic to pay the costs.
                                                                                 Pleas in law and main arguments adduced in support:
         ( iii ) use of the trade mark as referred to in Article 5
                   (2 ; or                                                       Under Article 189 of the EC Treaty, according to which a
                                                                                 directive is to be binding, as to the result to be achieved,
          ( iv ) use of the trade mark as referred to in Article 5                upon each Member State to which it is addressed,
                    ( 5 )?                                                        Member States are required to observe the time-limits laid
                                                                                  down in directives for their transposition . That time-limit
                                                                                  expired on 29 January 1994 without the Italian Republic
 (c ) For the purpose of answering Question ( b ), does it                        having brought into force the necessary provisions in
          make any difference whether announcement ( A) or                        order to comply with the Directive referred to in the
          announcement ( B ) is involved ?                                        Commission 's application.
                                                                                  O OJ No L 276 , 9 . 11 . 1993 , p . 11 .
  ( d ) In the light of the provision in Article 7 of the
          Directive, does it make any difference, with regard to
          the question whether the proprietor of the trade mark
          can prevent use of his trade mark registered
          exclusively for specified goods, whether the use                        Reference for a preliminary ruling by the 1 ? Juizo Civel da
          referred to in Question ( b) is that under points ( i ), ( ii ),        Comarca de Lisboa by order of that court of 29 January
           ( iii ) or ( iv )?                                                     1997 in the case of Banco de Fomento e Exterior, SA,
                                                                                  against CTV — Confec^oes Texteis de Vouzela, Lda.,
                                                                                  Amandio Mauricio Martins Pechim and Maria de Luz
   ( e ) On the assumption that both or one of the cases                                           Lima Barros Raposo Pechim
           described at the start of Question ( b ) involve the use
                                                                                                              ( Case C-66/97)
           of the proprietor's trade mark within the meaning of
           Article 5 ( 1 ), whether under Article 5 ( 1 ) ( a ) or ( b ),                                       ( 97/C 108/29
           can the proprietor prevent that use only where the
           person thus using the trade mark thereby creates the                    Reference has been made to the Court of Justice of the
           impression that his undertaking is affiliated to the                    European Communities by order of the 1 ? Juizo Civel da
           trade-mark proprietor's network, or can he also                         Comarca de Lisboa ( Civil Court No 1 , Lisbon ) of
            prevent that use where there is a good chance that the                 29 January 1997, which was received at the Court
            manner in which the trade mark is used for those                       Registry on 17 February 1997, for a preliminary ruling in
            announcements may create an impression among the                       the case of Banco de Fomento e Exterior, SA, against CTV
            public that the trade mark is in that regard being used                — Confeccoes         Texteis       de  Vouzela, Lda ., Amandio