CELEX: C2000/233/23
Language: en
Date: 2000-08-12 00:00:00
Title: Case C-143/00: Reference for a preliminary ruling by the High Court of Justice (England & Wales), Chancery Division, by order of that court of 7 March 2000, in the cases of Boehringer Ingelheim AG and Boehringer Ingelheim Pharma AG against Swingward Ltd, Boehringer Ingelheim AG and Boehringer Ingelheim Pharma AG against Dowelhurst Ltd, Glaxo Group Ltd against Swingward Ltd, Boehringer Ingelheim AG and Boehringer Ingelheim Pharma AG against Dowelhurst Ltd, Glaxo Group Ltd against Dowelhurst Ltd, SmithKline Beecham plc, Beecham Group plc and SmithKline & French Laboratories Ltd against Dowelhurst Ltd and Eli Lilly & Company against Dowelhurst Ltd

C 233/12               EN                     Official Journal of the European Communities                                      12.8.2000
The appellant claims that the Court should:                                    follows that the Court of First Instance should have held
                                                                               that the regulations at issue were not of concern to the
—     set aside the judgment delivered on 10 February 2000 by                  Netherlands Antilles within the meaning of the fourth
      the Court of First Instance in Joined Cases T-32/98 and                  paragraph of Article 230 EC.
      T-41/98;
                                                                         —     Infringement of the law, in that the Court of First Instance
—     determining the case itself, declare the applications for                held that Regulations Nos 2352/97 and 2494/97 were of
      annulment of Regulations Nos 2352/97 (1) and                             direct concern to the Government of the Netherlands
      2494/97 (2) inadmissible;                                                Antilles: the consequences of those regulations for the
                                                                               Netherlands Antilles manifested themselves exclusively in
—     alternatively, refer the case back to the Court of First                 the socio-economic sphere, in that employment opportu-
      Instance;                                                                nities in the rice sector were potentially threatened and
                                                                               the island region stood to lose revenue from various types
—     order the applicant in the proceedings at first instance to              of taxes.
      pay the costs, including the costs of the proceedings at
      first instance.                                                    —     Infringement of the law, in that the Court of First Instance
                                                                               held that the Commission, in adopting Regulation
                                                                               No 2532/97, committed an error of law: by omitting, in
Pleas in law and main arguments                                                its assessment of the reasons for Regulation No 2352/97,
                                                                               to have regard to the detailed reasons given for the
—     Infringement of the law, in that the Court of First Instance             import-restricting measures contained in Regulation
      held that Regulations Nos 2352/97 and 2494/97 were of                    No 2494/97, despite the fact that such an assessment
      individual concern to the Government of the Netherlands                  undoubtedly involves consideration of the consequences
      Antilles: the contested measures of the Commission are                   of Regulation No 2494/97, the Court of First Instance
      applicable to imports from all OCTs and not solely to                    infringed the law. The two regulations form a whole,
      those from the Netherlands Antilles.                                     with the first of them, namely Regulation No 2532/97,
                                                                               constituting merely a vehicle for the practical application
      In the event that the Court of Justice rules that Artic-                 of Article 109 of the OCT decision by means of the
      le 109(2) of the OCT decision must be interpreted as                     second regulation.
      meaning that a regulation applicable to all OCTs is of
      individual concern to each OCT, that will necessarily
      mean that the OCTs are given a right of action comparable          (1) OJ 1997 L 326, p. 21.
                                                                         (2) OJ 1997 L 343, p. 17.
      with that conferred on Member States under the second
      paragraph of Article 230 EC. In that event, the concept
      of a measure being ‘of individual concern’ will to that
      extent be rendered effectively meaningless. The fact that
      an OCT accounts for the majority of imports into
      the Community does not by definition mean that the
      economy of that OCT is affected more than that of                  Reference for a preliminary ruling by the High Court of
      another OCT. The Court of First Instance committed an              Justice (England & Wales), Chancery Division, by order
      error of reasoning inasmuch as it accepted that criterion          of that court of 7 March 2000, in the cases of Boehringer
      for the purposes of assessing whether the negative                 Ingelheim AG and Boehringer Ingelheim Pharma AG
      consequences of the regulations in issue made themselves           against Swingward Ltd, Boehringer Ingelheim AG and
      felt primarily in the territory of the Netherlands Antilles.       Boehringer Ingelheim Pharma AG against Dowelhurst
                                                                         Ltd, Glaxo Group Ltd against Swingward Ltd, Boehringer
—     Infringement of the law, in that the Court of First Instance
                                                                         Ingelheim AG and Boehringer Ingelheim Pharma AG
      held that the Government of the Netherlands Antilles had
                                                                         against Dowelhurst Ltd, Glaxo Group Ltd against Dowel-
      an interest in bringing proceedings: the subject-matter of
                                                                         hurst Ltd, SmithKline Beecham plc, Beecham Group
      the dispute (namely, the trading regime between the
                                                                         plc and SmithKline & French Laboratories Ltd against
      Community and the OCTs) falls within the competence
                                                                         Dowelhurst Ltd and Eli Lilly & Company against Dowel-
      of the Kingdom of the Netherlands. The Netherlands
                                                                                                     hurst Ltd
      Antilles, as an autonomous entity, cannot independently
      bring an action in this matter. Consequently, it was for
      the Kingdom of the Netherlands to determine whether an                                      (Case C-143/00)
      action should be brought for annulment of the regulations
      concerned. The Netherlands Antilles does not have the                                       (2000/C 233/23)
      right to do so.
                                                                         Reference has been made to the Court of Justice of the
      Nor can there be any question of any measures adopted              European Communities by an order of the High Court of
      by the Netherlands Antilles having been divested of their          Justice (England & Wales), Chancery Division, of 7 March
      legal consequences as a result of the regulations at issue.        2000, which was received at the Court Registry on 17 April
      In the present case, the Netherlands Antilles brought an           2000, for a preliminary ruling in the cases of Boehringer
      action for annulment of regulations which affect the               Ingelheim AG and Boehringer Ingelheim Pharma AG against
      economic position of specific undertakings and, consequ-           Swingward Ltd, Boehringer Ingelheim AG and Boehringer
      ently, employment opportunities within its territory. It           Ingelheim Pharma AG against Dowelhurst Ltd, Glaxo Group
 ---pagebreak--- 12.8.2000               EN                   Official Journal of the European Communities                                        C 233/13
Ltd against Swingward Ltd, Boehringer Ingelheim AG and                        (a)   does that requirement apply to all such cases of the
Boehringer Ingelheim Pharma AG against Dowelhurst Ltd,                              trade mark, including in advertising, re-labelling and
Glaxo Group Ltd against Dowelhurst Ltd, SmithKline Beecham                          repackaging or, if only some uses, which?
plc, Beecham Group plc and SmithKline & French Laboratories
Ltd against Dowelhurst Ltd and Eli Lilly & Company against                    (b) must the importer or dealer give notice to the
Dowelhurst Ltd, on the following questions:                                         proprietor or is it sufficient that the proprietor
                                                                                    receives such notice?
1.    Can a proprietor of a trade mark use his trade mark rights
      to stop or hinder the import of his own goods from one                  (c)   how much notice must be given.
      Member State into another or to hinder their subsequent
      marketing or promotion when the importation, marke-               8.    Is a national court of a Member State entitled, at the suit of
      ting or promotion causes no, or no substantial, harm to                 the proprietor of trade mark rights, to order injunctions,
      the specific subject matter of his rights?                              damages, delivery up and other relief in respect of
                                                                              imported goods or the packaging or advertisements
                                                                              therefor where the making of such an order (a) stops or
2.    Is the answer to the previous question different if the                 impedes the free movement of goods placed upon the
      ground relied on by the proprietor is that the importer or              market within the EC by the proprietor or with his
      subsequent dealer is using his mark in a way which,                     consent but (b) is not for the purpose of preventing harm
      although not prejudicial to its specific subject matter, is             to the specific subject matter of the rights and does not
      not necessary?                                                          help to prevent such harm?
3.    If an importer of the proprietor’s goods or a dealer in
      such imported goods needs to show that his use of the
      proprietor’s mark is ‘necessary’, is that requirement met
      if it is shown that the use of the mark is reasonably
      required to enable him to access (a) part only of the
      market in the goods, or (b) the whole of the market in
      the goods; or does it require that the use of the mark was
      essential to enabling the goods to be placed on the market        Action brought on 17 April 2000 by the Commission of
      and if none of these, what does ‘necessary’ mean?                 the European Communities against the Kingdom of the
                                                                                                   Netherlands
4.    If the proprietor of a mark is, prima facie, entitled to
      enforce his national trade mark rights against any use of                                  (Case C-145/00)
      his mark on or in relation to goods which is not
      necessary, is it abusive conduct and a disguised restriction
      on trade in accordance with the second sentence of                                         (2000/C 233/24)
      Article 30 of the Treaty, to use that entitlement in order
      to hinder or exclude parallel imports of his own goods            An action against the Kingdom of the Netherlands was
      which do not threaten the specific subject matter or              brought before the Court of Justice on 17 April 2000 by the
      essential function of the trade mark?                             Commission of the European Communities, represented by
                                                                        K. Banks and C. Van Der Hauwaert, of its Legal Service, acting
                                                                        as Agents, with an address for service in Luxembourg at the
5.    Where an importer or someone dealing in imported
                                                                        office of C. Gómez de la Cruz, of its Legal Service, Wagner
      goods intends to use the proprietor’s trade mark on or in
                                                                        Centre, Kirchberg.
      relation to those goods and such use does and will not
      prejudice the specific subject matter of the mark, must he
      nevertheless give the proprietor advance notice of his            The applicant claims that the Court should:
      intended use of the mark?
                                                                        —     declare that, by failing within the prescribed period to
6.    If the answer to the previous question is in the affirmative,           adopt the laws, regulations and administrative measures
      does that mean that failure of the importer or dealer to                necessary in order to implement the provisions of
      give such notice has the effect of entitling the proprietor             Directive 97/36/EC (1) of the European Parliament and of
      to restrain or hinder the importation or further commerci-              the Council of 30 June 1997 amending Council Directive
      alisation of those goods even though such importation or                89/552/EEC (2) on the coordination of certain provisions
      further commercialisation will not prejudice the specific               laid down by law, regulation or administrative action in
      subject matter of the mark?                                             Member States concerning the pursuit of television
                                                                              broadcasting activities, the Kingdom of the Netherlands
                                                                              has failed to comply with its obligations under the Treaty.
7.    If an importer or someone dealing in imported goods                     However, this application has no bearing on the adoption
      must give prior notice to the proprietor in respect of uses             of the measures required in consequence of the amend-
      of the trade mark which do not prejudice the specific                   ments made by Article 1 of Directive 97/36/EC to
      subject matter of the mark,                                             Articles 10 to 19 inclusive of Directive 89/552;