JUDGMENT OF THE COURT
16 June 1998 (1)
(Agreement establishing the World Trade Organisation TRIPS Agreement
Article 177 of the Treaty Jurisdiction of the Court of Justice Article 50 of
the TRIPS Agreement Provisional measures)
In Case C-53/96,
REFERENCE to the Court under Article 177 of the EC Treaty by the
Arrondissementsrechtbank Amsterdam for a preliminary ruling in the proceedings
pending before that court between
Hermès International (a partnership limited by shares)
and
FHT Marketing Choice BV,
on the interpretation of Article 50(6) of the Agreement on Trade-Related Aspects
of Intellectual Property Rights, as set out in Annex 1 C to the Agreement
establishing the World Trade Organisation, approved on behalf of the Community,
as regards matters within its competence, in Council Decision 94/800/EC of 22
December 1994 (OJ 1994 L 336, p. 1),
THE COURT,
composed of: G.C. Rodríguez Iglesias, President, C. Gulmann, H. Ragnemalm and
M. Wathelet (Presidents of Chambers), G.F. Mancini, J.C. Moitinho de Almeida,
P.J.G. Kapteyn, J.L. Murray, D.A.O. Edward (Rapporteur), J.-P. Puissochet,
G. Hirsch, P. Jann and L. Sevón, Judges,
Advocate General: G. Tesauro,
Registrar: L. Hewlett, Administrator,
after considering the written observations submitted on behalf of:
Hermès International, by L. van Bunnen, of the Brussels Bar,
the Netherlands Government, by A. Bos, Legal Adviser at the Ministry of
Foreign Affairs, acting as Agent,
the French Government, by C. de Salins, Deputy Director in the
Department of Legal Affairs at the Ministry of Foreign Affairs, and
G. Mignot, Secretary for Foreign Affairs in the same department, acting as
Agents,
the United Kingdom Government, by S. Ridley, of the Treasury Solicitor's
Department, acting as Agent,
the Commission of the European Communities, by P.J. Kuyper, Legal
Adviser, and B.J. Drijber, of its Legal Service, acting as Agents,
having regard to the Report for the Hearing,
after hearing the oral observations of Hermès International, represented by L. van
Bunnen, the Netherlands Government, represented by M. Fierstra, Assistant Legal
Adviser at the Ministry of Foreign Affairs, acting as Agent, the French
Government, represented by G. Mignot, the United Kingdom Government,
represented by J. Collins, Assistant Treasury Solicitor, acting as Agent, and
R. Plender, QC, the Council of the European Union, represented by G. Houttuin,
of its Legal Service, acting as Agent, and the Commission, represented by
P.J. Kuyper and B.J. Drijber, at the hearing on 27 May 1997,
after hearing the Opinion of the Advocate General at the sitting on 13 November
1997,
gives the following
Judgment
- 1.
- By order of 1 February 1996, received at the Court on 22 February 1996, the
Arrondissementsrechtbank (District Court) Amsterdam referred to the Court for
a preliminary ruling under Article 177 of the EC Treaty a question on the
interpretation of Article 50(6) of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (hereinafter 'the TRIPS Agreement), as set out in
Annex 1 C to the Agreement establishing the World Trade Organisation
(hereinafter 'the WTO Agreement), approved on behalf of the Community, as
regards matters within its competence, in Council Decision 94/800/EC of 22
December 1994 (OJ 1994 L 336, p. 1).
- 2.
- That question was raised in proceedings between Hermès International (hereinafter
'Hermès), a partnership limited by shares governed by French law, and FHT
Marketing Choice BV (hereinafter 'FHT), a company incorporated under
Netherlands law, concerning trade-mark rights owned by Hermès.
Legal background
- 3.
- Article 99(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the
Community trade mark (OJ 1994 L 11, p. 1) states, under the heading 'Provisional
and protective measures, as follows:
'Application may be made to the courts of a Member State, including Community
trade mark courts, for such provisional, including protective, measures in respect
of a Community trade mark or Community trade mark application as may be
available under the law of that State in respect of a national trade mark, even if,
under this Regulation, a Community trade mark court of another Member State
has jurisdiction as to the substance of the matter.
- 4.
- Under Article 143(1) that regulation was to enter into force on the sixtieth day
following the day of its publication in the Official Journal of the European
Communities. The regulation was published on 14 January 1994 and therefore
entered into force on 15 March 1994.
- 5.
- Article 1 of Decision 94/800 provides as follows:
'The following multilateral agreements and acts are hereby approved on behalf of
the European Community with regard to that portion of them which falls within the
competence of the European Community:
the Agreement establishing the World Trade Organization, and also
the Agreements in Annexes 1, 2 and 3 to that Agreement.
....
- 6.
- Article 50 of the TRIPS Agreement provides:
'1. The judicial authorities shall have the authority to order prompt and
effective provisional measures:
(a) to prevent an infringement of any intellectual property right from
occurring, and in particular to prevent the entry into the channels of
commerce in their jurisdiction of goods, including imported goods
immediately after customs clearance;
(b) to preserve relevant evidence in regard to the alleged infringement.
2. The judicial authorities shall have the authority to adopt provisional
measures inaudita altera parte where appropriate, in particular where any
delay is likely to cause irreparable harm to the right holder, or where there
is a demonstrable risk of evidence being destroyed.
3. The judicial authorities shall have the authority to require the applicant to
provide any reasonably available evidence in order to satisfy themselves with
a sufficient degree of certainty that the applicant is the right holder and that
the applicant's right is being infringed or that such infringement is imminent,
and to order the applicant to provide a security or equivalent assurance
sufficient to protect the defendant and to prevent abuse.
4. Where provisional measures have been adopted inaudita altera parte, the
parties affected shall be given notice, without delay after the execution of
the measures at the latest. A review, including a right to be heard, shall
take place upon request of the defendant with a view to deciding, within a
reasonable period after the notification of the measures, whether these
measures shall be modified, revoked or confirmed.
...
6. Without prejudice to paragraph 4, provisional measures taken on the basis
of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or
otherwise cease to have effect, if proceedings leading to a decision on the
merits of the case are not initiated within a reasonable period, to be
determined by the judicial authority ordering the measures where a
Member's law so permits or, in the absence of such a determination, not to
exceed 20 working days or 31 calendar days, whichever is the longer.
...
- 7.
- The Final Act embodying the results of the Uruguay Round of multilateral trade
negotiations (hereinafter 'the Final Act) and, subject to conclusion, the WTO
Agreement were signed in Marrakech on 15 April 1994 by the representatives of
the Community and of the Member States.
- 8.
- Article 289(1) of the Netherlands Code of Civil Procedure (hereinafter 'the Code)
provides as follows:
'In all cases in which, having regard to the interests of the parties, an immediate
provisional measure is necessary on grounds of urgency, the application may be
made at a hearing which the President shall hold for that purpose on working days
which he shall fix.
- 9.
- In such a case, Article 290(2) of the Code provides that the parties may appear
before the President under his 'voluntary jurisdiction to grant interim measures,
in which case the applicant must be represented at the hearing by counsel, whereas
the defendant may appear in person or be represented by counsel.
- 10.
- According to Article 292 of the Code, an interim measure adopted by the President
does not prejudge the examination of the merits of the main proceedings.
- 11.
- Lastly, under Article 295 of the Code, an appeal against the provisional order may
be lodged before the Gerechtshof (Court of Appeal) within two weeks of the
delivery of that decision.
The facts in the main proceedings
- 12.
- By virtue of international registrations R 196 756 and R 199 735 designating the
Benelux, Hermès is proprietor of the name 'Hermès and the name and device
'Hermès as trade marks.
- 13.
- Hermès applies those trade marks to inter alia neckties which it markets through
a selective distribution system. In the Netherlands, 'Hermès neckties are sold by
Galerie & Faïence BV and by the boutique Le Duc in Scheveningen and Zeist
respectively.
- 14.
- On 21 December 1995, Hermès, believing that FHT was marketing copies of its
ties, seized, with leave of the President of the Arrondissementsrechtbank
Amsterdam, 10 ties in the possession of FHT itself and attached 453 ties held by
PTT Post BV to the order of FHT.
- 15.
- On 2 January 1996, Hermès then applied to the President of the same court for an
interim order requiring FHT to cease infringement of its copyright and trade mark.
Hermès also requested the adoption of all measures necessary to bring the
infringement definitively to an end.
- 16.
- In the order for reference, the President of the Arrondissementsrechtbank found
that Hermès' claim that the ties seized at its request were counterfeit was plausible
and that FHT could not reasonably argue that it had acted in good faith. He
therefore granted Hermès' application and ordered FHT to cease any present or
future infringement of Hermès' exclusive copyright and trade-mark rights.
- 17.
- In the same proceedings Hermès also requested the President of the
Arrondissementsrechtbank to fix a period of three months from the date of service
of the interim decision as the period within which FHT could, under Article 50(6),
request revocation of those provisional measures and a period of 14 days as the
period within which Hermès could initiate proceedings on the merits of the case,
that period to run from the date on which FHT requested revocation.
- 18.
- The President of the Arrondissementsrechtbank considers that this last request of
Hermès' cannot be granted, because Article 50(6) of the TRIPS Agreement does
not place any time-limit on the defendant's right to request revocation of
provisional measures. He considers that the intention of that provision is, on the
contrary, to allow the defendant to request revocation of a provisional measure at
any time prior to delivery of judgment in the main proceedings. The period
envisaged in that provision for initiation of proceedings on the merits cannot
therefore be determined by reference to a period within which the defendant must
request revocation of the provisional measures.
- 19.
- Nevertheless, the President of the Arrondissementsrechtbank is uncertain whether
a period should be fixed within which Hermès must initiate proceedings on the
merits. Such an obligation would be required if the measure ordered in the interim
proceedings in question constituted a 'provisional measure within the meaning of
Article 50 of the TRIPS Agreement.
- 20.
- The President of the Arrondissementsrechtbank observes that in interim
proceedings under Netherlands law the defendant is summoned to appear, the
parties have the right to be heard, and the judge hearing the application for interim
measures makes an assessment of the substance of the case, which he also sets out
in a reasoned written decision, against which an appeal may be lodged. Moreover,
although the parties then have the right to initiate proceedings on the merits, in
matters falling within the scope of the TRIPS Agreement they normally abide by
the interim decision.
- 21.
- In those circumstances, the national court decided to stay proceedings and to refer
the following question to the Court for a preliminary ruling:
'Does an interim measure, as, for example, provided for in Article 289 et seq. of
the Code of Civil Procedure, whereby an immediate, enforceable measure may be
sought, fall within the scope of the expression provisional measures within the
meaning of Article 50 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights?
Jurisdiction of the Court of Justice
- 22.
- The Netherlands, French and United Kingdom Governments have submitted that
the Court of Justice has no jurisdiction to answer the question.
- 23.
- They refer in that regard to paragraph 104 of Opinion 1/94 of 15 November 1994([1994] ECR I-5267), in which the Court held that the provisions of the TRIPS
Agreement relating to 'measures ... to secure the effective protection of intellectual
property rights, such as Article 50, essentially fall within the competence of the
Member States and not that of the Community, on the ground that at the date
when that Opinion was delivered, the Community had not exercised its internal
competence in this area apart from in Council Regulation (EEC) No 3842/86 of 1
December 1986 laying down measures to prohibit the release for free circulation
of counterfeit goods (OJ 1986 L 357, p. 1). According to the Netherlands, French
and United Kingdom Governments, since the Community has still not adopted any
further harmonising measures in the area in question, Article 50 of the TRIPS
Agreement does not fall within the scope of application of Community law and the
Court of Justice therefore has no jurisdiction to interpret that provision.
- 24.
- It should be pointed out, however, that the WTO Agreement was concluded by the
Community and ratified by its Member States without any allocation between them
of their respective obligations towards the other contracting parties.
- 25.
- Equally, without there being any need to determine the extent of the obligations
assumed by the Community in concluding the agreement, it should be noted that
when the Final Act and the WTO Agreement were signed by the Community and
its Member States on 15 April 1994, Regulation No 40/94 had been in force for one
month.
- 26.
- Article 50(1) of the TRIPS Agreement requires that judicial authorities of the
contracting parties be authorised to order 'provisional measures to protect the
interests of proprietors of trade-mark rights conferred under the laws of those
parties. To that end, Article 50 lays down various procedural rules applicable to
applications for the adoption of such measures.
- 27.
- Under Article 99 of Regulation No 40/94, rights arising from a Community trade
mark may be safeguarded by the adoption of 'provisional, including protective,
measures.
- 28.
- It is true that the measures envisaged by Article 99 and the relevant procedural
rules are those provided for by the domestic law of the Member State concerned
for the purposes of the national trade mark. However, since the Community is a
party to the TRIPS Agreement and since that agreement applies to the Community
trade mark, the courts referred to in Article 99 of Regulation No 40/94, when
called upon to apply national rules with a view to ordering provisional measures for
the protection of rights arising under a Community trade mark, are required to do
so, as far as possible, in the light of the wording and purpose of Article 50 of the
TRIPS Agreement (see, by analogy, Case C-286/90 Poulsen and Diva Navigation
[1992] ECR I-6019, paragraph 9, and Case C-61/94 Commission v Germany [1996]
ECR I-3989, paragraph 52).
- 29.
- It follows that the Court has, in any event, jurisdiction to interpret Article 50 of the
TRIPS Agreement.
- 30.
- It is immaterial that the dispute in the main proceedings concerns trade marks
whose international registrations designate the Benelux.
- 31.
- First, it is solely for the national court hearing the dispute, which must assume
responsibility for the order to be made, to assess the need for a preliminary ruling
so as to enable it to give its judgment. Consequently, where the question referred
to it concerns a provision which it has jurisdiction to interpret, the Court of Justice
is, in principle, bound to give a ruling (see, to that effect, Joined Cases C-297/88
and C-197/89 Dzodzi [1990] ECR I-3763, paragraphs 34 and 35, and Case C-231/89
Gmurzynska-Bscher [1990] ECR I-4003, paragraphs 19 and 20).
- 32.
- Second, where a provision can apply both to situations falling within the scope of
national law and to situations falling within the scope of Community law, it is
clearly in the Community interest that, in order to forestall future differences of
interpretation, that provision should be interpreted uniformly, whatever the
circumstances in which it is to apply (see, to that effect, Case C-130/95 Giloy v
Hauptzollamt Frankfurt am Main-Ost [1997] ECR I-4291, paragraph 28, and Case
C-28/95 Leur-Bloem v Inspecteur der Belastingdienst/Ondernemingen [1997] ECR I-4161, paragraph 34). In the present case, as has been pointed out in paragraph 28
above, Article 50 of the TRIPS Agreement applies to Community trade marks as
well as to national trade marks.
- 33.
- The Court therefore has jurisdiction to rule on the question submitted by the
national court.
The question referred for a preliminary ruling
- 34.
- The national court asks whether a measure whose purpose is to put an end to
alleged infringements of a trade-mark right and which is adopted in the course of
a procedure distinguished by the following features:
the measure is characterised under national law as an 'immediate
provisional measure and its adoption must be made 'on grounds of
urgency,
the opposing party is summoned and is heard if he appears before the
court,
the decision adopting the measure is reasoned and given in writing following
an assessment of the substance of the case by the judge hearing the interim
application,
an appeal may be lodged against the decision, and
although the parties remain free to initiate proceedings on the merits of the
case, the decision is usually accepted by the parties as a 'final resolution
of their dispute,
is to be regarded as a 'provisional measure within the meaning of Article 50 of
the TRIPS Agreement.
- 35.
- It should be stressed at the outset that, although the issue of the direct effect of
Article 50 of the TRIPS Agreement has been argued, the Court is not required to
give a ruling on that question, but only to answer the question of interpretation
submitted to it by the national court so as to enable that court to interpret
Netherlands procedural rules in the light of that article.
- 36.
- According to Article 50(1) of the TRIPS Agreement, that article applies to 'prompt
and effective measures, whose purpose is to 'prevent an infringement of any
intellectual property right from occurring.
- 37.
- A measure such as the order made by the national court in the main proceedings
meets that definition. Its purpose is to put an end to an infringement of trade
mark rights; it is expressly characterised in national law as an 'immediate
provisional measure; and it is adopted 'on grounds of urgency.
- 38.
- Furthermore, it is common ground that the parties have the right, whether or not
they make use of it, to initiate, following the adoption of the measure in question,
proceedings on the merits of the case. Thus, in law, the measure is not regarded
as definitive.
- 39.
- The conclusion that a measure such as the order made by the national court is a
'provisional measure within the meaning of Article 50 of the TRIPS Agreement
is not affected by the other characteristics of that order.
- 40.
- First, as to the fact that the other party is summoned and is entitled to be heard,
it should be observed that Article 50(2) of the TRIPS Agreement provides that
'where appropriate provisional measures may be ordered 'inaudita altera parte
and that Article 50(4) lays down specific procedures in that regard. Although those
provisions allow for the adoption, where appropriate, of provisional measures
inaudita altera parte that cannot mean that only measures adopted in that way are
to be characterised as provisional for the purposes of Article 50 of the TRIPS
Agreement. It is, on the contrary, clear from those provisions that in all other
cases provisional measures are to be adopted in accordance with the principle audi
alteram partem.
- 41.
- Second, the fact that the judge hearing the application for interim measures gives
a reasoned decision in writing does not preclude that decision being characterised
as a 'provisional measure within the meaning of Article 50 of the TRIPS
Agreement, since that provision lays down no rule as to the form of the decision
ordering such a measure.
- 42.
- Third, there is nothing in the wording of Article 50 of the TRIPS Agreement to
indicate that the measures to which that article refers must be adopted without an
assessment by the judge of the substantive aspects of the case. On the contrary,
Article 50(3), in terms of which the judicial authorities are to have authority to
require the applicant to provide any reasonably available evidence in order to
satisfy themselves with a sufficient degree of certainty that his right is being
infringed or that such infringement is imminent, implies that the 'provisional
measures are based, at least to a certain extent, upon such an assessment.
- 43.
- Fourth, as regards the fact that an appeal may be brought against a measure such
as that in question in the main proceedings in this case, it should be observed that,
although Article 50(4) of the TRIPS Agreement expressly provides for the
possibility of requesting a 'review where the provisional measure has been
adopted inaudita altera parte, no provision of that article precludes that 'provisional
measures should in general be open to appeal.
- 44.
- Lastly, any possible willingness of the parties to accept the interim judgment as a
'final resolution of their dispute cannot alter the legal nature of a measure
characterised as 'provisional for the purposes of Article 50 of the TRIPS
Agreement.
- 45.
- The answer to the question submitted must therefore be that a measure whose
purpose is to put an end to alleged infringements of a trade-mark right and which
is adopted in the course of a procedure distinguished by the following features:
the measure is characterised under national law as an 'immediate
provisional measure and its adoption must be required 'on grounds of
urgency,
the opposing party is summoned and is heard if he appears before the
court,
the decision adopting the measure is reasoned and given in writing following
an assessment of the substance of the case by the judge hearing the interim
application,
an appeal may be lodged against the decision, and
although the parties remain free to initiate proceedings on the merits of the
case, the decision is usually accepted by the parties as a 'final resolution
of their dispute,
is to be regarded as a 'provisional measure within the meaning of Article 50 of
the TRIPS Agreement
Costs
- 46.
- The costs incurred by the Netherlands, French and United Kingdom Governments
and by the Commission, which have submitted observations to the Court, are not
recoverable. Since these proceedings are, for the parties to the main proceedings,
a step in the action pending before the national court, the decision on costs is a
matter for that court.
On those grounds,
THE COURT,
in answer to the question referred to it by the Arrondissementsrechtbank
Amsterdam by order of 1 February 1996, hereby rules:
A measure whose purpose is to put an end to alleged infringements of a trade-mark right and which is adopted in the course of a procedure distinguished by the
following features:
the measure is characterised under national law as an 'immediate
provisional measure and its adoption must be required 'on grounds of
urgency,
the opposing party is summoned and is heard if he appears before the
court,
the decision adopting the measure is reasoned and given in writing
following an assessment of the substance of the case by the judge hearing
the interim application,
an appeal may lodged against the decision, and
although the parties remain free to initiate proceedings on the merits of the
case, the decision is usually accepted by the parties as a 'final resolution
of their dispute,
is to be regarded as a 'provisional measure within the meaning of Article 50 of
the Agreement on Trade-Related Aspects of Intellectual Property Rights, as set out
in Annex 1 C to the Agreement establishing the World Trade Organisation,
approved on behalf of the Community, as regards matters within its competence,
in Council Decision 94/800/EC of 22 December 1994.
Rodríguez Iglesias Gulmann Ragnemalm Wathelet
Mancini Moitinho de Almeida Kapteyn
Murray Edward
Puissochet
Hirsch Jann
Sevón
|
Delivered in open court in Luxembourg on 16 June 1998.
R. Grass
G.C. Rodríguez Iglesias
Registrar
President