Martin y Paz Diffusion SA v David Depuydt and Fabriek van Maroquinerie Gauquie NV.
Date: 2013-09-19
42. As regards, first, Gauquie’s argument that the referring court is in actual fact seeking an interpretation of the national law transposing Directive 89/104, it must be stated that that company does not dispute that the application of the national or Benelux law concerning marks must be consistent with the directive to approximate the laws of the Member States relating to trade marks. The referring court is seeking an interpretation of Directive 89/104 precisely in order to ascertain whether the cour d’appel de Bruxelles could, without infringing that directive, prohibit Martin Y Paz from using its marks in respect of handbags and shoes and from invoking the exclusive right conferred by those marks against Gauquie. In those circumstances, it cannot be maintained that the purpose of the request for a preliminary ruling is anything other than the interpretation of European Union law (see, by analogy, Case C‑6/01 Anomar and Others  [2003] ECR I‑8621, paragraph 38).
43. So far as concerns, secondly, the argument that Articles 5 and 8 of Directive 89/104 are irrelevant to the resolution of the dispute in the main proceedings, it is apparent from settled case-law that such an argument can succeed only where it is quite obvious that the interpretation that is sought bears no relation to the actual facts of that dispute or to its purpose (see, inter alia, Case C‑379/98 PreussenElektra [2001] ECR I‑2099, paragraph 39; Joined Cases C‑94/04 and C‑202/04 Cipolla and Others  [2006] ECR I‑11421, paragraph 25; and Case C‑414/11 Daiichi Sankyo and Sanofi-Aventis Deutschland  [2013] ECR I‑0000, paragraph 35).
54. It is important to bear in mind, at the outset, that Articles 5 to 7 of Directive 89/104 effect a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the European Union (see, inter alia, Joined Cases C‑414/99 to C‑416/99 Zino Davidoff and Levi Strauss [2001] ECR I‑8691, paragraph 39; Case C‑127/09 Coty Prestige Lancaster Group [2010] ECR I‑4965, paragraph 27; and Case C‑482/09 Budějovický Budvar  [2011] ECR I‑8701, paragraph 32).
57. Secondly, it must be pointed out that consent, such as that allowing Gauquie to use signs which are identical to Martin Y Paz’s trade marks in respect of handbags and shoes, does indeed result in the exhaustion of the exclusive right within the meaning of Article 7 of Directive 89/104, but only in respect of the individual items of the product which were first put on the market in the European Economic Area (EEA) by the party who received the consent (see, to that effect, Case C‑173/98 Sebago and Maison Dubois  [1999] ECR I‑4103, paragraphs 19 and 20, and Coty Prestige Lancaster Group , paragraph 31). It is apparent from that case-law and from the actual wording of Article 7 of Directive 89/104 that the third party who receives that consent and who may therefore invoke the exhaustion of the exclusive right in respect of all the individual items of the goods covered by that consent which it puts on the market in the EEA, may no longer invoke such exhaustion once the consent is withdrawn.
58. Thirdly, as regards the limitations on the exclusive right which inherently follow from Article 5 of Directive 89/104 as such, it is settled case-law that the exclusive right under that provision was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of that mark, that is, to ensure that the trade mark can fulfil its functions. Therefore, the exercise of that right must be reserved to cases in which another party’s use of the sign adversely affects or is liable adversely to affect one of the functions of the trade mark. Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services in question, but also its other functions, in particular that of guaranteeing the quality of those goods or services or those of communication, investment or advertising (see, to that effect, Budějovický Budvar , paragraph 71 and the case-law cited, and Case C‑323/09 Interflora and Interflora British Unit  [2011] ECR I‑8625, paragraphs 32 to 41).