CELEX: C2001/275/14
Language: en
Date: 2001-09-29 00:00:00
Title: Case C-283/01: Reference for a preliminary ruling by the Hoge Raad der Nederlanden by judgment of that court of 13 July 2001 in the case of Shield Mark B.V. against Joost Kist, trading as Memex

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)
An action against the Council of the European Union was                Reference has been made to the Court of Justice of the
brought before the Court of Justice of the European Communi-           European Communities by judgment of the Hoge Raad der
ties on 16 July 2001 by the Commission of the European                 Nederlanden (Netherlands Supreme Court) of 13 July 2001,
Communities, represented by Mr Hendrik van Lier and                    received at the Court Registry on 18 July 2001, for a
Mr Bernd Martenczuk, acting as agents, with an address for             preliminary ruling in the case of Shield Mark B.V. v Joost Kist,
service in Luxembourg.                                                 trading as Memex — on the following questions:
                                                                       1.   (a)   Must Article 2 of the First Council Directive
                                                                                  89/104/EEC (1) of 21 December 1988 to approxi-
The 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 Euro-
      pean 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,
—     order the Council to pay the costs.                                         what requirements does the Directive lay down for
                                                                                  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 there-
                                                                                  with, 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 spectro-
the 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
illegal.                                                                          —     a combination of those methods;
                                                                                  —     some other method, and if so, which?
(1) OJ L 172, 26.06.2001, p. 1.
                                                                       (1) OJ 1989 L 40, p. 1.