TOP Logistics BV and Van Caem International BV v Bacardi Co. Ltd and Bacardi International Ltd - Bacardi & Company Ltd and Bacardi International Ltd v TOP Logistics BV and Van Caem International BV.
Date: 2015-07-16
31. In that regard, it should be recalled from the outset that it is essential that the proprietor of a trade mark registered in one or more Member States should be able to control the initial marketing in the EEA of goods bearing that mark (see, in particular, judgments in Zino Davidoff and Levi Strauss , C‑414/99 to C‑416/99, EU:C:2001:617, paragraph 33; Makro Zelfbedieningsgroothandel and Others , C‑324/08, EU:C:2009:633, paragraph 32; and L’Oréal and Others , C‑324/09, EU:C:2011:474, paragraph 60).
32. For that purpose, Article 5 of Directive 89/104 confers on the trade mark proprietor exclusive rights which entitle him inter alia to prevent any third party from importing goods bearing the mark, offering the goods, or putting them on the market or stocking them for those purposes without his consent (judgments in Zino Davidoff and Levi Strauss , C‑414/99 to C‑416/99, EU:C:2001:617, paragraph 40; Van Doren + Q , C‑244/00, EU:C:2003:204, paragraph 33; and Peak Holding , C‑16/03, EU:C:2004:759, paragraph 34).
34. It is apparent from the order for reference that the goods at issue in the main proceedings are no longer subject to a suspensive customs arrangement. Consequently, the case-law in accordance with which the placing of trade-marked goods under a suspensive customs arrangement, such as that of external transit referred to in Articles 91 and 92 of the Customs Code or that of the customs warehouse referred to in Article 98 of that code, cannot in itself infringe the exclusive right of the proprietor of the trademark (see, in particular, judgment in Philips and Nokia , C‑446/09 and C‑495/09, EU:C:2011:796, paragraphs 55 and 56 and the case-law cited), does not apply in a case such as that in the main proceedings.
35. On the contrary, the import duties having been paid for the goods at issue in the main proceedings and those having been released for free circulation, those goods have been imported within the meaning of Article 5(3)(c) of Directive 89/104 (see, to that effect, judgment in Class International , C‑405/03, EU:C:2005:616, paragraphs 43 and 44, and order in Canon , C‑449/09, EU:C:2010:651, paragraph 18).
40. It is true that, in importing and storing goods bearing a sign identical to another’s trade mark for goods identical to those in respect of which that mark is registered, that economic operator does not use that sign in the course of dealings with consumers. However, at the risk of depriving Directive 89/104 of any useful effect, the terms ‘using’ and ‘in the course of trade’ used in paragraph 1 of that article cannot be interpreted as meaning that they refer only to immediate relationships between a trader and a consumer.
41. First, concerning the notion of ‘using’, the court has previously held that there is use of a sign identical to the trade mark, within the meaning of Article 5 of Directive 89/104, where the economic operator concerned uses the sign in its own commercial communications (judgment in Google France and Google , C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 56).
42. That is the case, for example, where an economic operator imports or sends to a warehousekeeper goods bearing a trade mark of which it is not a proprietor with a view to releasing them for marketing. If it were otherwise, the acts of import and of stocking for the purpose of placement on the market, mentioned in Article 5(3) of Directive 89/104 and normally carried out without direct contact with potential consumers, could not be qualified as ‘using’ within the meaning of that article and could not be prohibited, even though the EU legislature has expressly identified them as being prohibited.
43. Concerning the expression ‘in the course of trade’, it is settled case-law that the use of a sign identical to a trade mark constitutes use in the course of trade where it occurs in the context of commercial activity with a view to economic advantage and not as a private matter (judgments in Arsenal Football Club , C‑206/01, EU:C:2002:651, paragraph 40; Céline , C‑17/06, EU:C:2007:497, paragraph 17; and Google France and Google , C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 50).
45. By contrast, concerning the warehousekeeper such as in the present case TOP Logistics, it must be held that its provision of a warehouse service for goods bearing another’s trade mark does not constitute use of a sign identical to that trade mark for goods or services identical or similar to those in respect of which the mark is registered. Inasmuch as such a service provider permits such use by its customers, its role cannot be assessed under Directive 89/104 but must be examined, if necessary, from the point of view of other rules of law (see, by analogy, judgment in Frisdranken Industrie Winters , C‑119/10, EU:C:2011:837, paragraphs 28 to 35).
46. In the second place, the referring court questions the risk of infringement of the functions of the mark that the act of placing goods bearing another’s trade mark under the duty suspension arrangement can cause. It cites in that regard the case-law of the Court in accordance with which, in the situation referred to in Article 5(1)(a) of Directive 89/104, the exercise of the exclusive right conferred by the mark must be reserved for those cases where use of the sign by a third party adversely affects, or is liable to affect adversely one of the functions of the trade mark, irrespective of whether the function concerned is the essential function of indicating the origin of the product or service covered by the trade mark or one of the other functions of the mark (judgments in Google France and Google , C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 79, and Interflora and Interflora British Unit , C‑323/09, EU:C:2011:604, paragraph 38).
47. In that regard it should be noted that the essential function of the indication of origin serves to identify the goods or services covered by the mark as originating from a particular undertaking, that undertaking being that under the control of which the goods or services are marketed (judgment in Backaldrin Österreich The Kornspitz Company , C‑409/12, EU:C:2014:130, paragraph 20 and the case-law cited).