TRADE MARKS: LATEST EU CASE LAW ON ENFORCEMENT

1. TRADE MARKS: LATEST EU CASE LAW ON ENFORCEMENT By Annick Mottet Haugaard Attorney at law, 2nd Vice President ECTA International Baltic Conference on Intellectual Property, 14 September 2007

2. Directive nr 89/104 of 21 December 1988 to approximate the laws of the MS relating to trade marks (Article 5) Council Regulation nr 40/94 of 20 December 1993 on the Community trade mark (Articles, 14, 15, 90 et seq) Council Regulation nr 1383/2003 on Customs actions Directive nr 2004/48 of 29 April 2004 to approximate the enforcement of IP rights (to be implemented by 29 April 2006) Proposal of 26 April 2006 for a Directive on criminal measures (COM/2006/168) EU LEGISLATION ON ENFORCEMENT

3. CASE LAW REVIEW ON ENFORCEMENT • ECJ, 9 November 2006, C-281/05, Montex Holding Ltd vs Diesel Spa • Facts - Montex has the right to use the DIESEL trademark in Ireland and sought to import jeans made in Poland to Ireland - The jeans transit through Germany - Diesel seizes the jeans at the German-Polish frontier - Diesel brings an infringement action against Montex in Germany

4. CASE LAW REVIEW ON ENFORCEMENT • Decision of the ECJ in the Montex case • “the proprietor of a trade mark can prohibit the transit through a MS in which that mark is protected, of goods bearing the trade mark and placed under the external transit procedure, whose destination is another MS where the mark is not so protected, only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in the MS of transit” • “It is in that regard, in principle, irrelevant whether goods whose destination is a MS come from an associated state or a third country, or whether those goods have been manufactured in the country of origin lawfully or in infringement of the existing trade mark rights of the proprietor in that country”

5. CASE LAW REVIEW ON ENFORCEMENT • Implications of the MONTEX case • External transit does not constitute use of the mark because it does not imply any marketing of the goods • Contradiction with the Council Regulation on Customs actions • Solutions

6. CASE LAW REVIEW ON ENFORCEMENT • ECJ, 25 January 2007, C-48/05, Adam Opel AG vs Autec AG • “Where a trade mark is registered both for motor vehicles – in respect of which it is well known – and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models: –       constitute, for the purposes of Article 5(1)(a) of Directive 89/104, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys; –       constitute, within the meaning of Article 5(2) of that Directive, a use which the proprietor of the trade mark is entitled to prevent – where the protection defined in that provision has been introduced into national law – if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles. • “Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models, within the meaning of Article 6(1)(b) of Directive 89/104.

7. CASE LAW REVIEW ON ENFORCEMENT • ECJ, 14 December 2006, C-316/05, Nokia Corp. vs Joachim Wärdell • Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark is to be interpreted • - as meaning that the mere fact that the risk of further infringement or threatened infringement of a Community trade mark is not obvious or is otherwise merely limited does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts. • - as meaning that the fact that the national law includes a general prohibition of the infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence, does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts. • - as meaning that a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take such measures, in accordance with its national law, as are aimed at ensuring that that prohibition is complied with, even if the national law includes a general prohibition of infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence. • - as meaning that a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take, from among the measures provided for under national law, such as are aimed at ensuring that that prohibition is complied with, even if those measures could not, under that law, be taken in the case of a corresponding infringement of a national trade mark.

8. THANK YOU FOR YOUR ATTENTION • Information & Questions: • www.ecta.org • www.oami.europa.eu • annick.mottet@lydian.be