Nokia Corp. v Joacim Wärdell.
Date: 2006-12-14
21. It follows from the need for uniform application of Community law and from the principle of equality that the terms of a provision of Community law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Community, having regard to the context of the provision and the objective pursued by the legislation in question (see, inter alia, Case 327/82 Ekro  [1984] ECR 107, paragraph 11; Case C‑287/98 Linster [2000] ECR I-6917, paragraph 43; and Case C‑170/03 Feron  [2005] ECR I-2299, paragraph 26).
27. If the condition relating to ‘special reasons’ were to be interpreted differently in the various Member States, the same circumstances could give rise to prohibitions of further infringement or threatened infringement in some Member States and not in others. Consequently, the protection afforded to Community trade marks would not be uniform throughout the entire area of the Community.
30. It follows that, in principle, a Community trade mark court must issue an order prohibiting further infringement or threatened infringement and, therefore, that the condition relating to ‘special reasons for not doing so’ – which the wording of Article 98(1) clearly shows is an exception to that obligation (see, inter alia, in Span ish, ‘[n]o habiendo’; in German, ‘sofern … nicht … entgegenstehen’; in English, ‘unless there are’; in French, ‘sauf s’il y a’; in Italian, ‘a meno que esistano’; and, in Dutch, ‘tenzij er … zijn’) – must be interpreted strictly.
35. The above considerations obviously do not preclude a Community trade mark court from not issuing such a prohibition were it to find that further infringement or threatened infringement on the part of the defendant was no longer possible. That would apply in particular if, after the commission of the acts in question, an action were brought against the proprietor of the mark infringed which culminated in a revocation of his rights.
38. First, as is apparent from the choice of words used by the Community legislature in the first sentence of Article 98(1) of the Regulation, (see, inter alia, in Spanish, ‘razones especiales’; in German, ‘besondere Gründe’; in English, ‘special reasons’; in French, ‘raisons particulières’; in Italian, ‘motivi particolari’; and, in Dutch, ‘speciale redenen’), the term ‘special reasons’ relates to factual circumstances specific to a given case.
49. It follows that, where the Community trade mark court of a Member State has issued an order prohibiting further infringement or threatened infringement, it is required to take, from among the measures provided for under the legislation of that Member State, such as are aimed at ensuring that that prohibition is complied with.
58. On the other hand, by introducing an absolute requirement for Community trade mark courts to take such measures when they issue an order prohibiting further infringement or threatened infringement, the Community legislature has precluded the national law of a Member State from making such measures contingent on compliance with additional conditions.
60. If that were not the case, the objective of Article 98(1) of the Regulation, which is the uniform protection, throughout the entire area of the Community, of the right conferred by the Community trade mark against the risk of infringement, would not be achieved. A prohibition against further infringement or threatened infringement which is not coupled with measures aimed at ensuring that it is complied with would, generally speaking, have no dissuasive effect.