Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik.
Date: 1999-02-23
21 Similarly, the transitional problem actually facing the Hoge Raad is different in kind from that governed by Article 5(4), and the directive does not make provision for determining the national law applicable in such a situation.  Since, moreover, no consideration based on the effectiveness of Community law in general or of the directive in particular calls for any given solution, the national court must determine in the light of the applicable national rules whether the appeal before it is to be resolved in accordance with the rules of the former Benelux law or those of the amended Benelux law (see, to that effect, Case C-349/95 Loendersloot v Ballantine [1997] ECR I-6227, paragraph 18).
22 None the less, whatever the applicable national law may be, it must be interpreted, as far as possible, in the light of the wording and purpose of the directive in order to achieve the result pursued by the latter and thereby comply with the third paragraph of Article 189 of the EC Treaty (see, inter alia, Case C-106/89 Marleasing [1990] ECR I-4135, paragraph 8, and Case C-91/92 Faccini Dori v Recreb [1994] ECR I-3325, paragraph 26).
29 It should in addition be borne in mind that Articles 6 and 7 of the directive contain rules limiting the right of the proprietor of a trade mark, under Article 5, to prohibit a third party from using his mark.  In this connection, Article 6 provides inter alia that the proprietor of a trade mark may not prohibit a third party from using the mark where it is necessary to indicate the intended purpose of a product, provided that he uses it in accordance with honest practices in industrial or commercial matters.  Article 7 provides that the proprietor is not entitled to prohibit the use of a trade mark in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent, unless there exist legitimate reasons for him to oppose further commercialisation of the goods.
33 The questions referred therefore concern a situation in which the BMW mark has been used to inform the public that the advertiser carries out the repair and maintenance of BMW cars or that he has specialised, or is a specialist, in the sale or repair and maintenance of those cars.
34 As described, this is a situation in which, at least at first sight - and as the United Kingdom Government has observed - the use in question falls within the scope of Article 5(1)(a) of the directive, since the BMW mark is used in respect of genuine BMW goods.
37 The second argument is that, in the advertisement for `repair and maintenance of BMWs', the BMW mark is not used in respect of goods but to describe a service in respect of which the mark has not been registered.  For that reason, Article 5(1)(a) of the directive is not applicable, so that it must be ascertained whether Article 5(1)(b) or (2) may be applicable.
38 In that connection, it is true that the scope of application of Article 5(1) and (2) of the directive, on the one hand, and Article 5(5), on the other, depends on whether the trade mark is used for the purpose of distinguishing the goods or services in question as originating from a particular undertaking, that is to say, as a trade mark as such, or whether it is used for other purposes.  In a situation such as that in the main proceedings, the issue is the use of the same trade mark intended to distinguish the goods in question as the subject of the services provided by the advertiser.
39 The advertiser uses the BMW mark to identify the source of the goods in respect of which the services are supplied, and thus to distinguish those goods from any others in respect of which the same services might have been provided.  If the use of the trade mark in advertisements for the service which consists of selling second-hand BMW cars is undoubtedly intended to distinguish the subject of the services provided, it is not necessary to treat any differently the advertisements for the service consisting of repair and maintenance of BMW cars.  In that case, too, the mark is used to identify the source of the goods which are the subject of the service.
40 In that context, it is only in the situations covered by Article 5(2) or (5) that the question arises whether use of the mark takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark by, for example, giving the public a false impression of the relationship between the advertiser and the trade mark owner.  Those matters are accordingly to be taken into account, not when classifying use under Article 5, but when assessing the legality of that use in the situations covered by Article 5(2) or (5).
42 Accordingly, the answer to be given to the second and third questions must be that the use of a trade mark, without the proprietor's authorisation, for the purpose of informing the public that another undertaking carries out the repair and maintenance of goods covered by that mark or that it has specialised or is a specialist in such goods constitutes, in circumstances such as those described in the judgment making the reference, use of the mark within the meaning of Article 5(1)(a) of the directive.
Questions 4 and 5
45 In order to reply to that question, it must be pointed out that, in view of the answer given to the second and third questions that the use of the trade mark in the advertisements concerned in the main proceedings falls within the scope of Article 5(1)(a) of the directive, the use in issue may be prohibited by the trade mark proprietor unless Article 6, concerning the limitation of the effects of a trade mark, or Article 7, concerning exhaustion of the rights conferred by a trade mark, are applicable.
48 In Case C-337/95 Parfums Christian Dior v Evora [1997] ECR I-6013, the Court first held, at paragraph 38, that on a proper interpretation of Articles 5 and 7 of the directive, when trade-marked goods have been put on the Community market by the proprietor of the trade mark or with his consent, a reseller, besides being free to resell those goods, is also free to make use of the trade mark in order to bring to the public's attention the further commercialisation of those goods.
49 In the same judgment, the Court then found, at paragraph 43, that damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of Article 7(2) of the directive, allowing the proprietor to oppose the use of his trade mark for further commercialisation of goods put on the Community market by him or with his consent.  As regards prestige goods, the Court stated, at paragraph 45, that the reseller must not act unfairly in relation to the legitimate interests of the trade mark owner, but must endeavour to prevent his advertising from affecting the value of the trade mark by detracting from the prestigious image of the goods in question.  At paragraph 48, the Court concluded that the proprietor of a trade mark may not rely on Article 7(2) to oppose the use of the trade mark, in ways customary in the reseller's sector of trade, for the purpose of bringing to the public's attention the further commercialisation of the trade-marked goods, unless it is established that such use seriously damages the reputation of the trade mark.
50 In the context of the present case, the consequence of that decision is that it is contrary to Article 7 of the directive for the proprietor of the BMW mark to prohibit the use of its mark by another person for the purpose of informing the public that he has specialised or is a specialist in the sale of second-hand BMW cars, provided that the advertising concerns cars which have been put on the Community market under that mark by the proprietor or with its consent and that the way in which the mark is used in that advertising does not constitute a legitimate reason, within the meaning of Article 7(2), for the proprietor's opposition.
51 The fact that the trade mark is used in a reseller's advertising in such a way that it may give rise to the impression that there is a commercial connection between the reseller and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings, may constitute a legitimate reason within the meaning of Article 7(2) of the directive.
52 Such advertising is not essential to the further commercialisation of goods put on the Community market under the trade mark by its proprietor or with his consent or, therefore, to the purpose of the exhaustion rule laid down in Article 7 of the directive.  Moreover, it is contrary to the obligation to act fairly in relation to the legitimate interests of the trade mark owner and it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute.  It is also incompatible with the specific object of a trade mark which is, according to the case-law of the Court, to protect the proprietor against competitors wishing to take advantage of the status and reputation of the trade mark (see, inter alia, Case C-10/89 HAG GF [1990] ECR I-3711, `HAG II', paragraph 14).
53 If, on the other hand, there is no risk that the public will be led to believe that there is a commercial connection between the reseller and the trade mark proprietor, the mere fact that the reseller derives an advantage from using the trade mark in that advertisements for the sale of goods covered by the mark, which are in other respects honest and fair, lend an aura of quality to his own business does not constitute a legitimate reason within the meaning of Article 7(2) of the directive.
54 In that connection, it is sufficient to state that a reseller who sells second-hand BMW cars and who genuinely has specialised or is a specialist in the sale of those vehicles cannot in practice communicate such information to his customers without using the BMW mark.  In consequence, such an informative use of the BMW mark is necessary to guarantee the right of resale under Article 7 of the directive and does not take unfair advantage of the distinctive character or repute of that trade mark.
55 Whether advertising may create the impression that there is a commercial connection between the reseller and the trade mark proprietor is a question of fact for the national court to decide in the light of the circumstances of each case.
The advertisements relating to repair and maintenance of BMW cars
57 Article 7 is intended to reconcile the interests of trade-mark protection and those of free movement of goods within the Community by making the further commercialisation of a product bearing a trade mark possible and preventing opposition by the proprietor of the mark (see, to that effect, Parfums Christian Dior, paragraphs 37 and 38).  Advertisements relating to car repair and maintenance do not affect further commercialisation of the goods in question.
58 None the less, so far as those advertisements are concerned, it is still necessary to consider whether use of the trade mark may be legitimate in the light of the rule laid down in Article 6(1)(c) of the directive, that the proprietor may not prohibit a third party from using the trade mark to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided that the use is necessary to indicate that purpose and is in accordance with honest practices in industrial or commercial matters.
59 In that regard, as the United Kingdom Government has observed, the use of the trade mark to inform the public that the advertiser repairs and maintains trade-marked goods must be held to constitute use indicating the intended purpose of the service within the meaning of Article 6(1)(c).  Like the use of a trade mark intended to identify the vehicles which a non-original spare part will fit, the use in question is intended to identify the goods in respect of which the service is provided.
60 Furthermore, the use concerned must be held to be necessary to indicate the intended purpose of the service. It is sufficient to note, as the Advocate General did at point 54 of his Opinion, that if an independent trader carries out the maintenance and repair of BMW cars or is in fact a specialist in that field, that fact cannot in practice be communicated to his customers without using the BMW mark.
61 Lastly, the condition requiring use of the trade mark to be made in accordance with honest practices in industrial or commercial matters must be regarded as constituting in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner, similar to that imposed on the reseller where he uses another's trade mark to advertise the resale of products covered by that mark.
62 Just like Article 7, Article 6 seeks to reconcile the fundamental interests of trade-mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain (see, in particular, HAG II, paragraph 13).