Anheuser-Busch Inc. v Budĕjovický Budvar, národní podnik.
Date: 2004-11-16
22. Paragraph 2(3) of the Toiminimilaki provides:
‘A trade name is regarded as having been established by use where it is generally well known by the public targeted by the activity of the economic operator.’
42. Since the Community is a party to the TRIPs Agreement, it is indeed under an obligation to interpret its trade-mark legislation, as far as possible, in the light of the wording and purpose of that agreement (see, with respect to a situation falling within the scope of both a provision of the TRIPs Agreement and Directive 89/104, Case C‑49/02 Heidelberger Bauchemie  [2004] ECR I‑0000, paragraph 20).
49. The effect of Article 70(1) of the TRIPs Agreement is merely to exclude the imposition of obligations under that agreement in respect of ‘acts which occurred’ before its date of application but it does not exclude such obligations in respect of situations which continue beyond that date. By contrast, Article 70(2) of the TRIPs Agreement states that the obligations arising from that agreement apply in respect of ‘all subject-matter existing … and which is protected’ on the date of application of that Agreement to a Member of the World Trade Organisation (‘the WTO’), so that, from that date, such a member is required to fulfil all the obligations arising from that agreement in respect of that existing subject-matter (see also, to that effect, the Report of the WTO Appellate Body, issued on 18 September 2000, Canada – Term of Patent Protection (AB‑2000‑7), WT/DS170/AB/R, paragraphs 69, 70 and 71).
54. The Court has already held that, having regard to their nature and structure, the provisions of the TRIPs Agreement do not have direct effect. Those provisions are not, in principle, among the rules in the light of which the Court is to review the legality of measures of the Community institutions under the first paragraph of Article 230 EC and are not such as to create rights upon which individuals may rely directly before the courts by virtue of Community law (see, to that effect, Dior , paragraphs 42 to 45).
55. However, it follows from the Court’s case-law that, when called upon to apply national rules with a view to ordering measures for the protection of rights in a field to which the TRIPs Agreement applies and in which the Community has already legislated, as is the case with the field of trade marks, the national courts are required under Community law to do so, as far as possible, in the light of the wording and purpose of the relevant provisions of the TRIPs Agreement (see, to that effect, inter alia, Dior , paragraphs 42 to 47).
56. Moreover, according to that case-law, the competent authorities called on to apply and interpret the relevant national law must likewise do so, as far as possible, in the light of the wording and the purpose of Directive 89/104 so as to achieve the result it has in view and thereby comply with the third paragraph of Article 249 EC (see, inter alia, Case C‑218/01 Henkel  [2004] ECR I‑0000, paragraph 60 and the case-law cited there).
59. First, with respect to Directive 89/104, it follows from the Court’s case-law on the definition of use by a third party, for which provision is made in Article 5(1) of that directive, that the exclusive right conferred by a trade mark was intended to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must 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, in particular its essential function of guaranteeing to consumers the origin of the goods (see Case C‑206/01 Arsenal Football Club  [2002] ECR I‑10273, paragraphs 51 and 54).
60. That is the case, in particular, where the use of that sign allegedly made by the third party is such as to create the impression that there is a material link in trade between the third party’s goods and the undertaking from which those goods originate. It must be established whether the consumers targeted, including those who are confronted with the goods after they have left the third party’s point of sale, are likely to interpret the sign, as it is used by the third party, as designating or tending to designate the undertaking from which the third party’s goods originate (see, to that effect, Arsenal Football Club , cited above, paragraphs 56 and 57).
62. The national court must also confirm whether the use made in the present case is one ‘in the course of trade’ and ‘in relation to goods’ within the meaning of Article 5(1) of Directive 89/104 (see, inter alia, Arsenal Football Club , paragraphs 40 and 41).
63. Where those conditions are satisfied, it follows from the case-law of the Court that, in the event of identity of the sign and the trade mark and of the goods or services, the protection conferred by Article 5(1)(a) of Directive 89/104 is absolute, whereas, in the situation provided for in Article 5(1)(b), the proprietor, in order to enjoy protection, must also prove that there is a likelihood of confusion on the part of the public because the signs and trade marks and the designated goods or services are identical or similar (see, to that effect, Case C‑292/00 Davidoff  [2003] ECR I‑389, paragraph 28, and Case C‑291/00 LTJ Diffusion  [2003] ECR I‑2799, paragraphs 48 and 49).
64. However, where the examinations to be carried out by the national court, referred to in paragraph 60 of this judgment, show that the sign in question in the main case is used for purposes other than to distinguish the goods concerned – for example, as a trade or company name – reference must, pursuant to Article 5(5) of Directive 89/104, be made to the legal order of the Member State concerned to determine the extent and nature, if any, of the protection afforded to the trade-mark proprietor who claims to be suffering damage as a result of use of that sign as a trade name or company name (see Case C‑23/01 Robelco  [2002] ECR I‑10913, paragraphs 31 and 34).
69. Thus, like Article 2 of Directive 89/104, Article 15 of the TRIPs Agreement lays down a guarantee of origin which is the essential function of a trade mark (see, with respect to that directive, inter alia, Arsenal Football Club , paragraph 49).
75. It should be remembered that it is for the Court to provide the national court with all the elements of interpretation of Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court specifically refers to them in its questions (see Case C‑456/02 Trojani  [2004] ECR I‑0000, paragraph 38 and the case-law cited there).
77. With respect to the Community, provision is made for such an exception in Article 6(1)(a) of Directive 89/104, which, essentially, allows third parties to use signs to indicate their own name or address, provided that they use them in accordance with honest practices in industrial or commercial matters.
78. Certainly, the Council of the European Union and the Commission of the European Communities issued a joint declaration, which was recorded in the minutes of the Council when Directive 89/104 was adopted, that that provision covers only natural persons’ names.
79. However, the interpretation given in such a declaration cannot be used where no reference is made to its content in the wording of the provision in question and that content therefore has no legal significance. The Council and the Commission themselves explicitly recognised that limitation in the preamble to their declaration, stating that ‘since the following statements of the Council and the Commission are not part of the legal text they are without prejudice to the interpretation of that text by the Court of Justice of the European Communities’ (see Heidelberger Bauchemie , cited above, paragraph 17 and the case-law cited there).
80. No reference is made in the wording of Article 6(1)(a) of Directive 89/104 to the considerable restriction of the meaning of ‘name’ resulting from the declaration mentioned in paragraph 78 of this judgment. That declaration therefore has no legal significance.
82. It is also necessary that the use be made in accordance with honest practices in industrial or commercial matters, which is the only assessment criterion referred to in Article 6(1) of Directive 89/104. The condition of ‘honest practice’ is, in essence, an expression of the duty to act fairly in relation to the legitimate interests of the trade-mark proprietor (see Case C‑100/02 Gerolsteiner Brunnen  [2004] ECR I‑0000, paragraph 24 and the case-law cited there). It is therefore essentially the same condition as that laid down by Article 17 of the TRIPs Agreement.
83. In assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the use of the third party’s trade name is understood by the relevant public, or at least a significant section of that public, as indicating a link between the third party’s goods and the trade-mark proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party ought to have been aware of that. Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which the third party might profit in selling his goods.
84. It is for the national court to carry out an overall assessment of all the relevant circumstances, which include the labelling of the bottle in order to assess, more specifically, whether the producer of the drink bearing the trade name can be regarded as unfairly competing with the proprietor of the trade mark (see, to that effect, Gerolsteiner Brunnen , paragraphs 25 and 26).