Case C‑661/11

Martin y Paz Diffusion SA

v

David Depuydt
and
Fabriek van Maroquinerie Gauquie NV

(Request for a preliminary ruling from the Cour de cassation (Belgium))

(Trade marks — Directive 89/104/EEC — Article 5 — Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark — Consent given in a situation where there is shared use — Possibility for that proprietor to put an end to the shared use and regain the exclusive use of its mark)

Summary — Judgment of the Court (Third Chamber), 19 September 2013

1.        Questions referred for a preliminary ruling — Admissibility — Conditions — Questions bearing a relation to the actual facts of the dispute or to its purpose

(Art. 267 TFEU)

2.        Approximation of laws — Trade marks — Directive 89/104 — Rights conferred by a trade mark — Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark — Consent given in a situation where there is shared use of the mark — Right of that proprietor to put an end to the shared use and regain the exclusive use of its mark

(Council Directive 89/104, Art. 5)

1.        See the text of the decision.

(see paras 42, 43)

2.        Article 5 of First Directive 89/104 on trade marks to approximate the laws of the Member States relating to trade marks precludes a proprietor of trade marks which, in a situation where there has been use shared with a third party, had consented to the use by that third party of signs which are identical to its marks in respect of certain goods in classes for which those marks are registered and which no longer consents to that use, from being deprived of any possibility of asserting the exclusive right conferred upon it by those marks against that third party and of itself exercising that exclusive right in respect of goods which are identical to those of that third party.

As regards the limitations on the exclusive right which inherently follow from Article 5 of Directive 89/104 as such, the exclusive right under that provision was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of that mark, that is, to ensure that the trade mark can fulfil its functions. Therefore, the exercise of that right must be reserved to cases in which another party’s use of the sign adversely affects or is liable adversely to affect one of the functions of the trade mark. Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services in question, but also its other functions, in particular that of guaranteeing the quality of those goods or services or those of communication, investment or advertising.

It is true, as borne out by the reference by the sixth recital in the preamble to Directive 89/104 to the national law on civil liability, that a national court may impose a penalty on the proprietor of a trade mark or order it to pay compensation for the damage suffered if it finds that that proprietor has unlawfully withdrawn the consent by which it allowed a third party to use signs which are identical to its marks. However, a finding that there has been such conduct cannot have the effect of prolonging, by a court decision and for an unspecified period, the shared use of those marks where the companies concerned no longer have the joint intention of sharing their use.

(see paras 58, 61, 62, operative part)