CELEX: C2002/003/12
Language: en
Date: 2002-01-05 00:00:00
Title: Judgment of the Court of 20 September 2001 in Case C-383/99 P: Procter & Gamble Company v Office, for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Appeal — Admissibility — Community trade mark — Regulation (EC) No 40/94 — Absolute ground for refusal to register — Distinctive character — Marks consisting exclusively of descriptive signs or indications — "BABY-DRY")

5.1.2002                 EN                      Official Journal of the European Communities                                               C 3/9
3.   Articles 44(3) and 58(1) of the above Agreement with the                                JUDGMENT OF THE COURT
     Republic of Poland, read together, and Articles 45(3) and 59(1)
     of the above Agreement with the Czech Republic, read together,
     do not in principle preclude a system of prior control which                                 of 20 September 2001
     makes the issue by the competent immigration authorities of
     leave to enter and remain subject to the condition that the
     applicant must show that he genuinely intends to take up an
     activity as a self-employed person without at the same time            in Case C-383/99 P: Procter & Gamble Company v Office,
     entering into employment or having recourse to public funds,           for Harmonisation in the Internal Market (Trade Marks
     and that he possesses, from the outset, sufficient financial                                and Designs) (OHIM) (1)
     resources for carrying out the activity in question as a self-
     employed person and has reasonable chances of success.
                                                                            (Appeal — Admissibility — Community trade mark —
     Substantive requirements such as those set out in section 4.2.3        Regulation (EC) No 40/94 — Absolute ground for refusal
     of Chapter B 12 of the Netherlands Vreemdelingencirculaire             to register — Distinctive character — Marks consisting
     (Circular on Aliens), in particular the requirement that Polish        exclusively of descriptive signs or indications — ‘BABY-
     and Czech nationals wishing to become established in the host                                         DRY’)
     Member State must from the outset have sufficient financial
     resources to carry on the activity in question in a self-employed
     capacity, are designed precisely to enable the competent auth-                                    (2002/C 3/12)
     orities of that State to carry out such checks and are appropriate
     for ensuring that such an objective is attained.
                                                                                                (Language of the case: French)
4.   Article 44(4)(a)(i) of the above Agreement with the Republic
     of Poland and Article 45(4)(a)(i) of the above Agreement with
     the Czech Republic must be construed to the effect that the
     ‘economic activities as self-employed persons’ referred to in those    (Provisional translation; the definitive translation will be published
     provisions have the same meaning and scope as the ‘activities                             in the European Court Reports)
     as self-employed persons’ referred to in Article 52 of the EC
     Treaty (now, after amendment, Article 43 EC).
     The activity of prostitution pursued in a self-employed capacity
     can be regarded as a service provided for remuneration and is          In Case C-383/99P: Procter and Gamble Company established
     therefore covered by both those expressions.                           in Cincinnatti (United States) represented by T. van Innis,
                                                                            avocat, appeal against the judgment of the Court of First
5.   Article 44 of the above Agreement with the Republic of Poland          Instance of the European Communities (Second Chamber) of
     and Article 45 of the above Agreement with the Czech Republic          8 July 1999 in Case T-163/98 Procter & Gamble v OHIM
     must be construed to the effect that prostitution is an economic       (‘BABY-DRY’) [1999] ECR II-2383, seeking to have that
     activity pursued by a self-employed person as referred to in those     judgment set aside in so far as the Court of First Instance ruled
     provisions, where it is established that it is being carried on by     that the First Board of Appeal of the Office for Harmonisation
     the person providing the service:                                      in the Internal Market (Trade Marks and Designs) had not
                                                                            infringed Article 7(1)(c) of Council Regulation (EC) No 40/94
                                                                            of 20 December 1993 on the Community trade mark (OJ
     —      outside any relationship of subordination concerning the        1994 L 11, p. 1) in adopting its decision of 31 July 1998 (Case
            choice of that activity, working conditions and conditions      R 35/1998-1), the other party to the proceedings being the
            of remuneration;                                                Office for Harmonisation in the Internal Market (Trade Marks
                                                                            and Designs) (Agents: O. Montalto and E. Joly) — the Court,
                                                                            composed of: G.C. Rodrı́guez Iglesias, President, C. Gulmann,
     —      under that person’s own responsibility; and                     M. Wathelet and V. Skouris (Presidents of Chambers),
                                                                            J.-P. Puissochet (Rapporteur), P. Jann, L. Sevón, R. Schintgen,
     —      in return for remuneration paid to that person directly         F. Macken, N. Colneric and S. von Bahr, Judges, F.G. Jacobs,
            and in full.                                                    Advocate General; D. Louterman-Hubeau for the Registrar,
                                                                            gave a judgment on 20 September 2001, in which it:
     It is for the national court to determine in each case, in the light
     of the evidence adduced before it, whether those conditions are
     satisfied.                                                             1.    Annuls the judgment of the Court of First Instance of 8 July
                                                                                  1999 in Case T-163/98 Procter & Gamble v OHIM (‘BABY-
                                                                                  DRY’), in so far as it found that the First Board of Appeal of
                                                                                  the Office for Harmonisation in the Internal Market (Trade
(1) OJ C 265 of 18.9.1999.                                                        Marks and Designs) did not infringe Article 7(1)(c) of Council
                                                                                  Regulation (EC) No 40/94 of 20 December 1993 on the
                                                                                  Community trade mark in adopting its decision of 31 July
                                                                                  1998 (Case R 35/1998-1);
 ---pagebreak--- C 3/10                 EN                      Official Journal of the European Communities                                            5.1.2002
2.    Annuls the decision of the First Board of Appeal of the Office      the European Economic Area of 2 May 1992 (OJ 1994 L 1,
      for Harmonisation in the Internal market (Trade Marks and           p. 3) — the Court, composed of: G.C. Rodrı́guez Iglesias,
      Designs) of 31 July 1998 (Case R 35/1998-1) in so far as it         President, P. Jann, N. Colneric and S. von Bahr (Presidents of
      refused the application for registration of ‘BABY-DRY’ as a         Chambers), C. Gulmann (Rapporteur), D.A.O. Edward, A. La
      trade mark on the basis of Article 7(1)(c) of Regulation            Pergola, J.-P. Puissochet, L. Sevón, V. Skouris and C.W.A. Tim-
      No 40/94;                                                           mermans, Judges; C. Stix-Hackl, Advocate General; L. Hewlett,
                                                                          Administrator, for the Registrar, has given a judgment on
                                                                          20 November 2001, in which it has ruled:
3.    Orders the Office for Harmonisation in the Internal Market
      (Trade Marks and Designs) to pay the costs both at first
      instance and on appeal.
                                                                          1.   On a proper construction of Article 7(1) of First Council
                                                                               Directive 89/104/EEC of 21 December 1988 to approximate
(1) OJ C 6 of 8.1.2000.
                                                                               the laws of the Member States relating to trade marks, as
                                                                               amended by the Agreement on the European Economic Area of
                                                                               2 May 1992, the consent of a trade mark proprietor to the
                                                                               marketing within the European Economic Area of products
                                                                               bearing that mark which have previously been placed on the
                                                                               market outside the European Economic Area by that proprietor
                                                                               or with his consent may be implied, where it follows from facts
                                                                               and circumstances prior to, simultaneous with or subsequent to
                                                                               the placing of the goods on the market outside the European
                 JUDGMENT OF THE COURT
                                                                               Economic Area which, in the view of the national court,
                                                                               unequivocally demonstrate that the proprietor has renounced
                     of 20 November 2001                                       his right to oppose placing of the goods on the market within
                                                                               the European Economic Area.
in Joined Cases C-414/99 to C-416/99 [reference for a
preliminary ruling from the High Court of Justice of
England and Wales, Chancery Division (Patent Court)]:                     2.   Implied consent cannot be inferred:
Zino Davidoff SA and A & G Imports Ltd (C-414/99),
between Levi Strauss & Co., Levi Strauss (UK) Ltd and
Tesco Stores Ltd, Tesco plc (C-415/99), and between Levi                       —      from the fact that the proprietor of the trade mark has not
Strauss & Co., Levi Strauss (UK) Ltd v Costco Wholesale                               communicated to all subsequent purchasers of the goods
                             UK Ltd (1)                                               placed on the market outside the European Economic
                                                                                      Area his opposition to marketing within the European
(Trade marks — Directive 89/104/EEC — Article 7(1) —                                  Economic Area;
Exhaustion of the rights conferred by a trade mark — Goods
placed on the market outside the EEA — Imported into the
EEA — Consent of the trade mark proprietor — Whether                           —      from the fact that the goods carry no warning of a
consent required to be express or implied — Law governing                             prohibition of their being placed on the market within the
  the contract Presumption of consent — Non-applicability)                            European Economic Area;
                           (2002/C 3/13)
                                                                               —      from the fact that the trade mark proprietor has transferred
                                                                                      the ownership of the products bearing the trade mark
                   (Language of the case: English)                                    without imposing any contractual reservations and that,
                                                                                      according to the law governing the contract, the property
                                                                                      right transferred includes, in the absence of such reser-
                                                                                      vations, an unlimited right of resale or, at the very least,
In Joined Cases C-414/99 to C-416/99 (reference to the Court                          a right to market the goods subsequently within the
under Article 234 EC) from the High Court of Justice of                               European Economic Area.
England and Wales, Chancery Division (Patent Court) (United
Kingdom of Great Britain and Northern Ireland) for a prelimi-
nary ruling in the proceedings pending before that court                  3.   With regard to exhaustion of the trade mark proprietor’s
between Zino Davidoff SA and A & G Imports Ltd (C-414/99),
                                                                               exclusive right, it is not relevant:
between Levi Strauss & Co., Levi Strauss (UK) Ltd and Tesco
Stores Ltd, Tesco plc (C-415/99), and between Levi Strauss &
Co., Levi Strauss (UK) Ltd v Costco Wholesale UK Ltd, formerly
Costco UK Ltd (C-410/99) — on the interpretation of Article 7                  —      that the importer of goods bearing the trade mark is not
of First Council Directive 89/104/EEC of 21 December 1988                             aware that the proprietor objects to their being placed on
to approximate the laws of the Member States relating to trade                        the market in the European Economic Area or sold there
marks (OJ 1989 L 40, p. 1), as amended by the Agreement on                            by traders other than authorised retailers, or