Mitsubishi Shoji Kaisha Ltd and Mitsubishi Caterpillar Forklift Europe BV v Duma Forklifts NV and G.S. International BVBA.
Date: 2018-07-25
25


Furthermore, as regards the criticisms made by Mitsubishi of the Advocate General’s Opinion, it must be borne in mind, first, that the Statute of the Court of Justice of the European Union and the Rules of Procedure of the Court make no provision for interested parties to submit observations in response to the Advocate General’s Opinion (judgment of 20 December 2017, Acacia and D’Amato, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 26 and the case-law cited).
26


Secondly, under the second paragraph of Article 252 TFEU, it is the duty of the Advocate General, acting with complete impartiality and independence, to make, in open court, reasoned submissions on cases which, in accordance with the Statute of the Court of Justice of the European Union, require the Advocate General’s involvement. In that regard, the Court is not bound either by the Opinion delivered by the Advocate General or by the reasoning which led to that Opinion. As a consequence, the fact that a party disagrees with the Advocate General’s Opinion, irrespective of the questions examined in the Opinion, cannot in itself constitute grounds justifying the reopening of the oral part of the procedure (judgment of 20 December 2017, Acacia and D’Amato, C‑397/16 and C‑435/16, EU:C:2017:992, paragraph 27 and the case-law cited).
29


Article 5(1) of Directive 2008/95 and Article 9(1) of Regulation No 207/2009, which are identical in their content, must be interpreted in the same way (see, to that effect, the order of 19 February 2009, UDV North America, C‑62/08, EU:C:2009:111, paragraph 42).
30


For that purpose, it should be recalled that Directive 2008/95, which codified Directive 89/104, is intended, as its recitals 1 and 2 show, to eliminate disparities between the trade mark laws of the Member States which may impede the free movement of goods and the freedom to provide services and distort competition within the common market. Trade mark rights constitute an essential element in the system of undistorted competition which EU law is intended to establish and maintain. In such a system, undertakings must be able to attract and retain customers by the quality of their goods or services, which is made possible only by distinctive signs allowing them to be identified (judgment of 12 November 2002, Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraphs 46 and 47, and the case-law cited).
31


It must also be recalled that Article 7(1) of Directive 2008/95 and Article 13(1) of Regulation No 207/2009 limit the exhaustion of the rights conferred on the proprietor of a trade mark to cases where goods are put on the market in the EEA. They allow the proprietor to market his products outside the EEA without thereby exhausting his rights within it. By specifying that the placing of goods on the market outside the EEA does not exhaust the proprietor’s right to oppose the importation of those goods without his consent, the EU legislature thus allowed the proprietor of the trade mark to control the initial marketing in the EEA of goods bearing the mark (see, to that effect, the judgments of 16 July 1998, Silhouette International Schmied, C‑355/96, EU:C:1998:374, paragraph 26; of 20 November 2001, Zino Davidoff and Levi Strauss, C‑414/99 to C‑416/99, EU:C:2001:617, paragraphs 32 and 33, and of 18 October 2005, Class International, C‑405/03, EU:C:2005:616, paragraph 33).
32


In that regard, the Court has repeatedly noted that, in order to ensure the protection of the rights conferred by the trade mark, it is essential that the proprietor of the trade mark registered in one or several Member States can control the first placing of goods bearing that mark on the market in the EEA (judgments of 15 October 2009, Makro Zelfbedieningsgroothandel and Others, C‑324/08, EU:C:2009:633, paragraph 32; of 12 July 2011, L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraph 60, and of 16 July 2015, TOP Logistics and Others, C‑379/14, EU:C:2015:497, paragraph 31). It also follows from the Court’s case-law that that right of the proprietor applies to every individual type of that product (see, to that effect, the judgments of 1 July 1999, Sebago and Maison Dubois, C‑173/98, EU:C:1999:347, paragraphs 19 and 20, and of 3 June 2010, Coty Prestige Lancaster Group, C‑127/09, EU:C:2010:313, paragraph 31).
34


The Court has held on many occasions that that exclusive right of the proprietor of the mark was conferred in order to enable him to protect his specific interests as proprietor, namely to ensure that the trade mark can fulfil its function, and that the exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects, or is liable to affect, the functions of the trade mark. Amongst those functions is not only the essential function of the mark which is to guarantee to consumers the origin of the product or service, but also the other functions of the mark, such as, in particular, that of guaranteeing the quality of the product or service, or those of communication, investment or advertising (see the judgments of 12 November 2002, Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraph 51; of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 58; of 23 March 2010, Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraphs 77 and 79, and of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraphs 37 and 38).
35


As regards those functions, it must be borne in mind that the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him to distinguish the goods or service from others which have another origin (judgment of 23 March 2010, Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 82 and the case-law cited). It serves in particular to guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality, which it does in order to fulfil its essential role in the system of undistorted competition (see, to that effect, the judgments of 12 November 2002, Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraph 48, and of 12 July 2011, L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraph 80).
36


The function of investment of the mark includes the possibility for the proprietor of a mark to employ it in order to acquire or preserve a reputation capable of attracting customers and retaining their loyalty, by means of various commercial techniques. Thus, when the use by a third party, such as a competitor of the trade mark proprietor, of a sign identical to the trade mark in relation to goods or services identical with those for which the mark is registered substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty, the third party’s use adversely affects that function of the trade mark. The proprietor is, as a consequence, entitled to prevent such use under Article 5(1)(a) of Directive 2008/95 or, in the case of an EU trade mark, under Article 9(1)(a) of Regulation No 207/2009 (see, to that effect, the judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraphs 60 to 62).
37


As to the function of the advertising of the mark, it is that of using a mark for advertising purposes designed to inform and persuade consumers. Accordingly, the proprietor of a trade mark is, in particular, entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with its trade mark in relation to goods or services which are identical with those for which that trade mark is registered, where that use adversely affects the proprietor’s use of its mark as a factor in sales promotion or as an instrument of commercial strategy (see, to that effect, the judgment of 23 March 2010, Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraphs 91 and 92).
38


As regards the concept of ‘use in the course of trade’, the Court has already held that the list of types of use that the proprietor of the trade mark may prohibit, contained in Article 5(3) of Directive 2008/95 and Article 9(2) of Regulation No 207/2009, is not exhaustive (see judgments of 12 November 2002, Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraph 38; of 25 January 2007, Adam Opel, C‑48/05, EU:C:2007:55, paragraph 16, and of 23 March 2010, Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 65), and that it refers exclusively to active behaviour on the part of the third party (see judgment of 3 March 2016, Daimler, C‑179/15, EU:C:2016:134, paragraph 40).
39


The Court also found that use, in the course of trade, of a sign identical or similar to the mark presupposes that the use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (see the judgment of 16 July 2015, TOP Logistics and Others, C‑379/14, EU:C:2015:497, paragraph 43 and the case-law cited). It has clarified that the terms ‘use’ and ‘in the course of trade’ cannot be interpreted as meaning that they refer only to immediate relationships between a trader and a consumer and, in particular, that there is use of a sign identical to the mark where the economic operator concerned uses the sign in its own commercial communications (see the judgment of 16 July 2015, TOP Logistics and Others, C‑379/14, EU:C:2015:497, paragraphs 40 and 41 and the case-law cited).