CELEX: 62009CO0449
Language: en
Date: 2010-10-28 00:00:00
Title: Order of the Court (Fifth Chamber) of 28 October 2010.#Canon Kabushiki Kaisha v IPN Bulgaria OOD.#Reference for a preliminary ruling: Sofiyski gradski sad - Bulgaria.#Article 104(3), first subparagraph, of the Rules of Procedure – Trade marks – Directive 89/104/EEC – Right of the proprietor of a mark to oppose the first placing into circulation within the EEA, without his consent, of goods bearing that mark.#Case C-449/09.

Case C-449/09
      Canon Kabushiki Kaisha
      v
      IPN Bulgaria OOD
      (Reference for a preliminary ruling from the Sofiyski gradski sad)
      (Article 104(3), first paragraph, of the Rules of Procedure – Trade marks – Directive 89/104/EEC – Right of the proprietor of a mark to oppose the first placing into circulation within the EEA, without his consent, of goods
         bearing that mark)
      
      Summary of the Order
      1.        Approximation of laws – Trade marks – Directive 89/104 – Rights conferred by a trade mark – Right to prohibit the importation
            or exportation of goods bearing the mark – Definition of ‘importation’
      (Council Directive 89/104, Art. 5(3)(c))
      2.        Approximation of laws – Trade marks – Directive 89/104 – Rights conferred by a trade mark – Right to prohibit the first placing
            into circulation within the European Economic Area of original goods bearing the mark
      (Council Directive 89/104, Arts 5 and 7(1))
      1.        When original goods sent to a Member State from a non-member State have not yet been released for free circulation, but are
         placed under the customs warehousing procedure, there is no ‘importation’ within the meaning of Article 5(3) of First Directive
         89/104 on trade marks.
      
      (see para. 18)
      2.        First Directive 89/104 on trade marks may not be interpreted as leaving it open to the Member States to provide in their domestic
         law for exhaustion of the rights conferred by a trade mark in respect of products put on the market in non-member States.
         The effect of the directive is to limit exhaustion of the rights conferred on the proprietor of a trade mark to those cases
         alone in which goods have been put on the market in the EEA and thus to allow the proprietor to control the initial marketing
         in the EEA of goods bearing the mark. 
      
      Accordingly, when goods bearing a mark have not previously been put on the market in the EEA by the proprietor of that mark
         or with his consent, Article 5 of the directive confers on that proprietor exclusive rights which entitle him, in particular,
         to prohibit any third party from importing those goods, offering them, or putting them on the market or stocking them for
         these purposes.
      
      Thus, Article 5 of the directive must be interpreted as meaning that the proprietor of a trade mark may prevent original goods
         bearing that mark from being put on the market in the EEA for the first time without his consent.
      
       (see paras 22-24, 26, operative part)
ORDER OF THE COURT (Fifth Chamber)
      28 October 2010 (*)
      
      (Article 104(3), first subparagraph, of the Rules of Procedure – Trade marks – Directive 89/104/EEC – Right of the proprietor of a mark to oppose the first placing into circulation within the EEA, without his consent, of goods
         bearing that mark)
      
      In Case C‑449/09,
      REFERENCE for a preliminary ruling under Article 234 EC from the Sofiyski gradski sad (Bulgaria), made by decision of 30 October
         2009, received at the Court on 18 November 2009, in the proceedings
      
      Canon Kabushiki Kaisha
      v
      IPN Bulgaria OOD,
      THE COURT (Fifth Chamber),
      composed of J.-J. Kasel, President of the Chamber, acting for the President of the Fifth Chamber, M. Ilešič (Rapporteur),
         and E. Levits, Judges,
      
      Advocate General: Y. Bot,
      Registrar: A. Calot Escobar,
      the Court intending to give a decision on the action by reasoned order in accordance with Article 104(3), first subparagraph,
         of the Rules of Procedure,
      
      after hearing the Advocate General,
      makes the following
      Order
      1        This reference for a preliminary ruling concerns the interpretation of Article 5 of First 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).
      
      2        The reference has been made in proceedings between the Japanese company Canon Kabushiki Kaisha (‘Canon’) and IPN Bulgaria
         OOD (‘IPN Bulgaria’), a Bulgarian company, concerning goods manufactured by Canon and sent, without its consent, to Bulgaria
         from a non-Member State, with IPN Bulgaria as consignee.
      
       Directive 89/104
      3        Article 5 of Directive 89/104 is headed ‘Rights conferred by a trade mark’. Article 5(1)(a) provides:
      
      ‘The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent
         all third parties not having his consent from using in the course of trade:
      
      (a)      any sign which is identical with the trade mark in relation to goods or services which are identical with those for which
         the trade mark is registered’.
      
      4        Article 5(3) states inter alia that the following may be forbidden:
      
      ‘(a)      affixing the sign to the goods or to the packaging thereof;
      (b)      offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying
         services thereunder;
      
      (c)      importing or exporting the goods under the sign;
      …’
      5        Article 7 of Directive 89/104 in its original form, headed ‘Exhaustion of the rights conferred by a trade mark’, stated in
         paragraph 1: 
      
      ‘The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market
         in the Community under that trade mark by the proprietor or with his consent.’
      
      6        In accordance with Article 65(2) of the Agreement on the European Economic Area of 2 May 1992 (OJ 1994 L 1, p. 3), read in
         conjunction with Annex XVII, Point 4, to that agreement, the original version of Article 7(1) of Directive 89/104 was amended
         for the purposes of that agreement, with the expression ‘in the Community’ being replaced by the words ‘in a Contracting Party’.
         
      
      7        Directive 89/104 was repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to
         approximate the laws of the Member States relating to trade marks (Codified version) (OJ 2008 L 299, p. 25), which entered
         into force on 28 November 2008. However, having regard to the time at which the facts occurred, the disputes in the main proceedings
         remain governed by Directive 89/104.
      
       The dispute in the main proceedings and the question referred for a preliminary ruling
      8        Canon manufactures camera equipment, copiers, printers and other equipment. Its goods are marketed under the word sign ‘CANON’.
         In the European Union, that sign is registered as a Community mark and, in many Member states, including the Republic of Bulgaria,
         as a national mark.
      
      9        By letter of 29 April 2008, Burgas Regional Customs Directorate (Regionalna Direktsia Burgas) (Bulgaria) informed a representative
         of Canon that on 22 April 2008 it had seised a cargo of ink cartridges bearing the mark CANON. The cargo came from Hong Kong
         (China) and had been imported into Bulgaria through the port of Bourgas. The consignee of the goods was IPN Bulgaria.
      
      10      By order of 16 May 2008, the Sofiyski gradski sad (Sofia City Court), granted Canon’s application for an interim injunction,
         ordering the goods in question to be seised. That decision was upheld by order of 26 June 2008 of the Sofiyski apelativen
         sad (Sofia Court of Appeal). Pursuant to that injunction, those goods were placed in temporary storage at the Burgas District
         Customs Directorate (Rayona mitnicheska direktsia Burgas).
      
      11      Canon then brought proceedings against IPN Bulgaria before the Sofiyski gradski sad, claiming that by importing the goods
         in question it had infringed the exclusive rights conferred by the mark CANON.
      
      12      In the course of these proceedings, it has been remarked that the ink cartridges at issue are authentic goods under the mark
         CANON and must therefore be considered ‘original’ products. According to the order for reference, those goods were sent to
         Bulgaria without Canon’s consent. IPN, however, dispute that there was ‘importation’. It argues, in that regard, that a customer
         established in Serbia ordered those goods from it, so that their transportation to that destination through Bulgaria was an
         external transit.
      
      13      The parties are in dispute as to whether, as a matter of law, the proprietor of a mark is entitled to prohibit a third party
         from importing into the European Economic Area (EEA) original goods bearing that mark, without his consent.
      
      14      During those proceedings, the Varhoven kasatsionen sad (Supreme Court of Cassation) delivered an interpretive judgment on
         that question, holding that the sole fact of importing original goods from a non-Member State without the consent of the proprietor
         of the mark borne by those goods, does not infringe the exclusive rights conferred by the mark.
      
      15      Questioning the compatibility of that interpretive decision with European Union law, the Sofiyski gradski sad decided to stay
         proceedings and to refer the following question to the Court:
      
      ‘Is Article 5 of [Directive 89/104], in so far is it confers on the trade mark proprietor the exclusive right to prevent all
         third parties not having his consent from using in the course of trade any sign which is identical with the trade mark, for
         example importing or exporting goods under the sign, to be interpreted as meaning that the trade mark proprietor’s rights
         include the right to prohibit use of the trade mark without his consent through the importation of original goods, provided
         that the trade mark proprietor’s rights under Article 7 of the Directive are not exhausted?’
      
       The question referred for a preliminary ruling
      16      In accordance with the first subparagraph of Article 104(3) of the Rules of Procedure, where the answer to a question referred
         for a preliminary ruling may be clearly deduced from existing case-law the Court may, after hearing the Advocate General,
         give its decision by reasoned order in which reference is made to its previous judgment or to the relevant case-law.
      
      17      Clearly that is the case for the present reference for a preliminary ruling.
      
      18      As regards, first, the concept of ‘importation’ within the meaning of Article 5(3)(c) of Directive 89/104, it is observed
         that in Case C‑405/03 Class International [2005] ECR I‑8735, the Court held, in paragraphs 42 to 44, that where original goods sent to a Member State from a non-Member
         State have not yet been released for free circulation, but are placed under the customs warehousing procedure, there is no
         ‘importation’ within the meaning of that provision.
      
      19      On the other hand, for goods that have been physically brought into the EEA, but not yet released for free circulation, the
         proprietor of the mark may rightly claim infringement of his exclusive rights conferred by Article 5(1) and (3)(b) of Directive
         89/104, if it is established that those goods are the subject of a sale or an offer for sale that necessarily entails putting
         them on the market in the EEA (Class International, paragraph 58).
      
      20      In accordance with those principles, it is incumbent on the referring court to investigate whether IPN Bulgaria is preparing
         to put the goods at issue in the main proceedings on the market in the EEA, or to offer or sell those goods to another trader
         who is bound to put them on the market in the EEA (see, by analogy, Class International, paragraph 60).
      
      21      As regards, second, the question asked, in essence, by the referring court, as to whether Article 5 of Directive 89/104 is
         to be interpreted as meaning that the proprietor of a mark may prohibit original products bearing that mark from being put
         on the market for the first time in the EEA without his consent, it is held that it is clear from several judgments of the
         Court that the answer is in the affirmative.
      
      22      The Court held, in Case C-355/96 Silhouette International Schmied [1998] ECR I‑4799, paragraph 26, that Directive 89/104 cannot be interpreted as leaving it open to the Member States to provide
         in their domestic law for exhaustion of the rights conferred by a trade mark in respect of products put on the market in third
         countries.
      
      23      In later judgments, the Court specified that, in light of Silhouette International Schmied, the effect of Directive 89/104 is to limit exhaustion of the rights conferred on the proprietor of a trade mark to cases
         where goods have been put on the market in the EEA and thus to allow the proprietor to control the initial marketing in the
         EEA of goods bearing the mark (Joined Cases C-414/99 to C‑416/99 Zino Davidoff and Levi Strauss [2001] ECR I-8691, paragraph 33; Case C‑244/00 Van Doren + Q [2003] ECR I-3051, paragraph 26; and Case C‑16/03 Peak Holding [2004] ECR I-11313, paragraph 36).
      
      24      Accordingly, where goods bearing a mark have not previously been put on the market in the EEA by the proprietor of that mark
         or with his consent, Article 5 of Directive 89/104 confers on that proprietor exclusive rights which entitle him inter alia
         to prohibit any third party from importing those goods, offering them, or putting them on the market or stocking them for
         these purposes (see Peak Holding, paragraph 34).
      
      25      It follows from all of that case-law that, if the referring court concludes from its investigation of the facts referred to
         in paragraph 20 of the present order that IPN Bulgaria is preparing to put the goods at issue in the main proceedings on the
         market in the EEA, or to offer or sell those goods to another trader who is bound to put them on the market in the EEA, which
         would mean that, having regard to the uncontested facts established in the main proceedings, this is a case of original goods
         being put on the market for the first time in the EEA, without the consent of the proprietor of the mark, the case-law according
         to which that proprietor may prevent that putting on the market is to be applied.
      
      26      In light of the above, the answer to the question referred is that Article 5 of Directive 89/104 must be interpreted as meaning
         that the proprietor of a trade mark may prevent original goods bearing that mark from being put on the market in the EEA for
         the first time without his consent.
      
       Costs
      27      Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court,
         the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs
         of those parties, are not recoverable.
      
      On those grounds, the Court (Fifth Chamber) hereby orders:
      Article 5 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 the proprietor of a trade mark may prevent original goods bearing that
            mark from being put on the market in the European Economic Area for the first time without his consent.
      [Signatures]
      * Language of the case: Bulgarian.