CELEX: C1999/299/13
Language: en
Date: 1999-10-16 00:00:00
Title: Case C-299/99: Reference for a preliminary ruling by the Court of Appeal (England & Wales), by order of that court of 5 May 1999, in the case of Philips Electronics NV against Remington Consumer Products Ltd

16.10.1999              EN                   Official Journal of the European Communities                                         C 299/13
— Article 14 of the directive, which lays down specific                 (England & Wales) of 5 May 1999, which was received at the
    provisions for qualifications awarded by the authorities            Court Registry on 9 August 1999, for a preliminary ruling in
    of the former German Democratic Republic, was not                   the case of Philips Electronics NV against Remington Con-
    transposed.                                                         sumer Products Ltd, on the following questions:
— Article 7 was only partly transposed and Article 11 was               1. Is there a category of marks which is not excluded from
    not fully transposed in that no account was taken of the                registration by Articles 3(1)(b)-(d) and Article 3(3) of the
    correction published in the Official Journal L 87 of 2 April            Council Directive 89/104/EEC(1) (‘the Directive’), which is
    1986.                                                                   nonetheless excluded from registration by Article 3(1 )(a)
                                                                            of the Directive (as being incapable of distinguishing the
                                                                            goods of the proprietor from those other undertakings)?
Breaches relating to the incorrect transpo-
sition of the directive
                                                                        2. Is the shape (or part of the shape) of an article (being the
                                                                            article in respect of which the sign is registered) only
(a) Establishment as an architect                                           capable of distinguishing for the purposes of Article 2 if it
                                                                            contains some capricious addition (being an embellishment
    Article 4.2(a) of decree No 129/92 lays down a general                  which has no functional purpose) to the shape of the
    requirement for the production of the original diploma or               article?
    a certified true copy of the diploma of the applicant
    architect. That requirement ought to be reserved for cases
    of doubt over the authenticity of qualifications and is             3. Where a trader has been the only supplier of particular
    contrary to Article 27 of the directive inasmuch as it lays             goods to the market, is extensive use of a sign, which
    down an additional general condition which is neither                   consists of the shape (or part of the shape) of those goods
    appropriate nor justified for the purposes of exercising the            and which does not include any capricious addition,
    right of establishment. The same conclusion is called for               sufficient to give the sign a distinctive character for the
    with regard to the routine requirement for an official                  purposes of Article 3(3) in circumstances where as a result
    translation of documents produced by an applicant archi-                of that use a substantial proportion of the relevant trace
    tect, laid down by Article 4.3 of the decree.                           and public
(b) The provision of services                                               (i) associate the shape with that trader and no other
                                                                                  undertaking;
    Article 9.3 of decree No 129/92, which requires a provider
    of services to register with the regional and the national              (ii) believe that goods of that shape come from that trader
    professional body for architects, clearly exceeds the bounds                  absent a statement to the contrary?
    of the directive and constitutes a wholly unjustified
    obstacle to the provision of occasional service on Italian
    territory.                                                          4. (i) Can the restriction imposed by the words ‘if it consists
                                                                                  exclusively of the shape of goods which is necessary to
    Article 9.1 of that decree prohibits an architect providing                   achieve a technical result’ appearing in Article 3(1)(e)(ii)
    services in Italy from setting up a permanent infrastructure                  be overcome by establishing that there are other shapes
    there. This sort of general and indiscriminate prohibition                    which can obtain the same technical result or
    is not justified by any of the provisions of the directive
    relating to freedom to provide services. Moreover, it is                (ii) is the shape unregistrable by virtue thereof if it is
    contrary to Article 59 of the EC Treaty (now, after                           shown that the essential features of the shape are
    amendment, Article 49 EC).                                                    attributable only to the technical result or
                                                                            (iii) is some other and, if so, what test appropriate for
(1) OJ L 223 of 21.8.1985, p. 15.
                                                                                  determining whether the restriction applies?
                                                                        5. Article 3(1)(c) of the Directive applies to ‘trade marks
                                                                            which consist exclusively of signs or indications which
                                                                            may serve, in trade, to designate the kind, quality, quantity,
                                                                            intended purpose ... of the goods or service’. Article
                                                                            6(1 )(b) of the Directive applies to the use by a third party
Reference for a preliminary ruling by the Court of Appeal                   of ‘indications concerning the kind, quality, quantity,
(England & Wales), by order of that court of 5 May 1999,                    intended purpose ... of goods or services’. The word
in the case of Philips Electronics NV against Remington                     ‘exclusively’ thus appears in Article 3(1)(c) and is omitted
                    Consumer Products Ltd                                   in Article 6(1)(b) of the Directive? On a proper interpret-
                                                                            ation of the Directive, does this omission mean that, even
                                                                            if a mark consisting of the shape of goods is validly
                         (Case C-299/99)                                    registered, it is not infringed by virtue of Article 6(1)(b) in
                                                                            circumstances where
                         (1999/C 299/13)
                                                                            (i) the use of the shape of goods complained of is and
Reference has been made to the Court of Justice of the                            would be taken as an indication as to the kind of goods
European Communities by an order of the Court of Appeal                           or the intended purpose thereof and
 ---pagebreak--- C 299/14                EN                   Official Journal of the European Communities                                    16.10.1999
     (ii) a substantial proportion of the relevant trace and            — declare TF1’s action inadmissible in so far as it is directed
          public believe that goods of that shape come from the              against the Commission’s failure to act pursuant to Article
          trade mark proprietor, absent a statement to the                   90 of the EC Treaty;
          contrary?
                                                                        — order TF1 to pay the costs of the proceedings before the
6. Does the exclusive right granted by Article 5(1 ) extend to               Court of Justice and give a new ruling on the costs of the
     enable the proprietor to prevent third parties using ident-             proceedings before the Court of First Instance, limiting the
     ical or similar signs in circumstances where that use was               order against the Commission so that it is commensurate
     not such as to indicate origin or is it limited so as to                with the outcome of the present appeal.
     prevent only use which wholly or in part does indicate
     origin?
                                                                        Pleas in law and main arguments
7. Is use of an allegedly infringing shape of goods, which is
     and would be seen as an indication as to the kind of goods
     or the intended purpose thereof, nonetheless such as to            The Court of First Instance erred in its interpretation of Article
     indicate origin if a substantial proportion of the relevant        90 of the EC Treaty (now Article 86 EC): It was wrong of the
     trade and public believe that goods of the shape complai-          Court to lay down, somewhat dogmatically, the principle that
     ned of come from the trade mark proprietor absent a                the purpose of the power conferred upon the Commission by
     statement to the contrary?                                         Article 90 of the EC Treaty is to protect the rights of
                                                                        individuals. On that premise, the Court of First Instance
                                                                        adopted the general view that an individual must be entitled to
(1) First Council Directive 89/104/EEC of 21 December 1988 to           bring an effective legal action against decisions which are
    approximate the laws of the Member States relating to trade         capable of adversely effecting rights recognised by the Treaties.
    marks (OJ L 40, 11.2.1989, p. 1).                                   By implying that an action for failure to act must lie, so that
                                                                        the principle of effective legal action may be observed, when
                                                                        Article 90(1) of the EC Treaty is directly effective and can
                                                                        therefore be relied on in proceedings before national courts to
                                                                        set aside State measures falling within that provision, the Court
                                                                        of First Instance misinterpreted Article 90.
Appeal brought on 10 August 1999 by the Commission
of the European Communities against the judgment deliv-
ered on 3 June 1999 by the Third Chamber, Extended
Composition, of the Court of First Instance of the Euro-
pean Communities in Case T-17/96 between Télévision                     Reference for a preliminary ruling from the Finanzgericht
Française 1 SA (TF1) and the Commission of the European                 Hamburg by order of that court of 15 July 1999 in the case
       Communities supported by the French Republic                     of OGT Fruchthandelsgesellschaft mbH v Hauptzollamt
                                                                                              Hamburg-St Annen
                         (Case C-302/99 P)
                                                                                                (Case C-307/99)
                          (1999/C 299/14)
                                                                                                (1999/C 299/15)
An appeal against the judgment delivered on 3 June 1999 by
the Third Chamber, Extended Composition, of the Court of                Reference has been made to the Court of Justice of the
First Instance of the European Communities in Case T-17/96              European Communities by an order of the Finanzgericht
between Télévision Française 1 SA (TF1) and the Commission              (Finance Court) Hamburg of 15 July 1999, which was received
of the European Communities supported by the French                     at the Court Registry on 13 August 1999, for a preliminary
Republic was brought before the Court of Justice of the                 ruling in the case of OGT Fruchthandelsgesellschaft mbH v
European Communities on 10 August 1999 by the Com-                      Hauptzollamt Hamburg-St Annen on the following question:
mission of the European Communities, represented by Giulia-
no Marenco, Principal Legal Adviser, and Klaus Wiedner, of its
Legal Service, with an address for service in Luxembourg at             Is the second subparagraph of Article 18(1) of Regulation
Wagner Centre, Kirchberg.                                               (EEC) No 404/93 (1), as amended by Regulation (EC)
                                                                        No 1637/98 (2), inapplicable on the ground of breach of
                                                                        Articles I and XIII of GATT (1994), individuals being able to
The appellant claims that the Court should:                             rely thereon in court proceedings?
— set aside the judgment delivered on 3 June 1999 by the
     Court of First Instance in Case T-17/96 Télévision Française       (1) OJ 1993 L 47, p. 1.
     1 SA ‘TF1’ v Commission, in so far as it was held that             (2) OJ 1998 L 210, p. 28.
     TF1’s action was admissible in as much as it was directed
     against the Commission’s failure to act pursuant to Article
     90 of the EC Treaty (now Article 86);