Language of document : ECLI:EU:C:1998:160

OPINION OF ADVOCATE GENERAL

JACOBS

delivered on 2 April 1998 (1)

Case C-63/97

Bayerische Motorenwerke AG and BMW Nederland BV

v

Ronald Karel Deenik

1.
    To what extent may a trade-mark owner object to the use of his trade markby a third party in order to refer to the provision of services relating to his genuinetrade-marked goods, when he has not registered his trade mark in respect of thetype of services in question? That is the main issue raised by the present requestfor a preliminary ruling by the Hoge Raad der Nederlanden (Supreme Court of theNetherlands) on the interpretation of the Trade Marks Directive. (2)

The facts

2.
    Bayerische Motorenwerke AG ('BMW AG‘), a company established underthe laws of the Federal Republic of Germany and whose registered office is inMunich, manufactures and markets motor vehicles. It has marketed BMW cars inthe Benelux countries since 1930.

3.
    BMW AG has registered with the Benelux Trade Marks Office the tradename BMW and two figurative trade marks for, inter alia, engines and motorvehicles, as well as for parts of and accessories for engines and motor vehicles(collectively 'the BMW marks‘).

4.
    BMW AG markets its vehicles via a network of authorised dealers. In theNetherlands it supervises the network with the help of BMW Nederland BV('BMW BV‘). Authorised dealers are entitled to use the BMW marks for thepurpose of running their business but are required to meet the high standards oftechnical quality deemed necessary by BMW AG and its subsidiaries whenproviding service and warranties and in sales promotion.

5.
    The respondent, Mr Deenik, runs a garage business. Although he is not oneof BMW AG's authorised dealers, he has specialised in particular in the sale ofsecond-hand cars of the BMW mark and in the repair and maintenance of carsbearing that mark.

6.
    In the present proceedings BMW AG and BMW BV (collectively 'BMW‘)submit that, when carrying on his business, Mr Deenik makes unauthorised use, inadvertisements, of the trade marks of BMW AG, or at least of similar signs. Bywrit dated 21 February 1994, BMW accordingly sought an order prohibitingMr Deenik from using the BMW marks or any similar signs in advertisements,publicity statements or other announcements, and from using such trade marks orsigns in any other way for or in connection with his business. BMW relied on itsrights under Article 13A of the Uniform Benelux Law on Trade Marks in theversion in force at that time ('the Benelux Law‘).

7.
    The Arrondissementsrechtbank te Zwolle (Tribunal of Zwolle) ('theRechtbank‘) took the view that a number of statements made by Mr Deenik inadvertisements constituted unauthorised use of the BMW marks in so far as thosestatements might create the impression that they emanated from an undertakingthat was entitled to use those trade marks and was thus affiliated to the dealernetwork of BMW. The Rechtbank accordingly made an order prohibitingMr Deenik from using the BMW marks in such a way.

8.
    However, the Rechtbank also ruled that Mr Deenik was free to use, inadvertisements, statements such as 'Repairs and maintenance of BMWs‘, since itwas sufficiently clear that that statement referred only to products bearing theBMW mark; hence, even if such use did not come within the derogating provisionin the third paragraph of Article 13A of the Benelux Law (which provided for theexhaustion of the rights of the trade-mark owner in relation to goods which he orhis licensee had put into circulation under that mark), there were in any eventreasonable grounds for the use of the mark and the proprietor of the trade markcould not thereby be adversely affected. Furthermore, the Rechtbank deemedpermissible the use of statements such as 'Specialist in BMWs‘ or 'specialised inBMWs‘ inasmuch as BMW had not disputed that Mr Deenik had specialistexperience regarding BMW vehicles and it was not for BMW to decide who wasentitled to describe himself as a specialist in BMW vehicles. The Rechtbank alsodismissed the claim for damages brought by BMW.

9.
    BMW appealed against that decision to the Gerechtshof (Court of Appeal),Arnhem, seeking, in addition to an order setting that decision aside in so far astheir original claims had not been upheld or had been upheld only to a limitedextent, a declaration in law, essentially to the effect that, by referring inadvertisements to 'Repairs and maintenance of BMWs‘ and announcing that hewas a 'Specialist in BMWs‘ or 'specialised in BMWs‘, Mr Deenik was infringingthe trade-mark rights of BMW or was otherwise acting unlawfully. Mr Deenikcross-appealed.

10.
    On 22 August 1995 the Gerechtshof confirmed the decision of theRechtbank both on the main appeal and on the cross-appeal. It was against thatjudgment that the appeal to the Hoge Raad (Supreme Court) was lodged.

11.
    As mentioned earlier, the writ in the present proceedings was issued on 21February 1994. By that time the Trade Marks Directive should have beentransposed into Benelux law since the deadline for implementation of the Directivewas 31 December 1992. (3) However, the Benelux Protocol of 2 December 1992,amending the Benelux Law on Trade Marks pursuant to the Trade Marks Directive

(in particular Article 13A(1) of the Law), did not come into force until 1 January1996. I shall refer to the Benelux Law on Trade Marks as amended by thatProtocol as 'the Amended Benelux Law‘.

12.
    The Hoge Raad considers that the appeal before it raises the questionwhether it is the previous or the amended version of the Benelux Law whichapplies to the present case. Since the Benelux Protocol amending the Benelux Lawdoes not in its view contain any transitional provisions with regard to Article 13Aof that Law, the Hoge Raad has decided to refer that question to the BeneluxCourt. The Hoge Raad has also decided to refer to this Court the questionwhether Member States, when adapting their legislation to the Directive, are freeto introduce transitional provisions or whether in doing so they must comply withspecific restrictions, and if so, which.

13.
    The Hoge Raad also considers it necessary to refer further questions to theBenelux Court concerning the interpretation of Benelux Law both before and afterthe implementation of the Directive. Since it recognises that both the previous andthe amended versions of the Benelux law must as far as possible be interpreted inthe light of the wording and purpose of the Directive, it has referred similarquestions to this Court concerning the interpretation of the Directive.

14.
    The questions referred to this Court are as follows:

(1)    In view of the fact that, with regard to the rights associated with a trademark, Directive 89/104/EEC contains a transitional legal provision only forthe purpose of the case described in Article 5(4), are Member Statesotherwise free to lay down rules on the matter, or does Community law ingeneral, or the objective and tenor of Directive 89/104 in particular, havethe effect that Member States are not entirely free in that regard but mustcomply with specific restrictions, and if so which?

(2)    If someone, without the authorisation of the trade-mark proprietor, makesuse of that proprietor's trade mark, registered exclusively for specifiedgoods, for the purpose of announcing to the public that he (A) carries outrepair and maintenance work on the goods which have been placed on themarket under that trade mark by the proprietor or with his consent, or thathe (B) is a specialist or is specialised with regard to such goods, does this,under the scheme of Article 5 of the Directive, involve:

    (i)    use of the trade mark in relation to goods which are identical to thosefor which it was registered, as referred to in Article 5(1)(a);

    (ii)    use of that trade mark in relation to services which must be deemedto constitute use of the trade mark within the meaning of Article5(1)(a) or use of the trade mark as referred to in Article 5(1)(b), on

the assumption that it can be stated that there is an identity betweenthose services and the goods for which the trade mark was registered;

    (iii)    use of the trade mark as referred to in Article 5(2); or

    (iv)    use of the trade mark as referred to in Article 5(5)?

(3)    For the purpose of answering Question (2), does it make any differencewhether announcement (A) or announcement (B) is involved?

(4)    In the light of the provision in Article 7 of the Directive, does it make anydifference, with regard to the question whether the proprietor of the trademark can prevent use of his trade mark registered exclusively for specifiedgoods, whether the use referred to in Question (2) is that under (i), (ii), (iii)or (iv)?

(5)    On the assumption that both or one of the cases described at the start ofQuestion (2) involve the use of the proprietor's trade mark within themeaning of Article 5(1), whether under Article 5(1)(a) or (b), can theproprietor prevent that use only where the person thus using the trade markthereby creates the impression that his undertaking is affiliated to the trade-mark proprietor's network, or can he also prevent that use where there isa good chance that the manner in which the trade mark is used for thoseannouncements may create an impression among the public that the trademark is in that regard being used to an appreciable extent for the purposeof advertising his own business as such by creating a specific suggestion ofquality?

15.
    Written observations have been submitted by BMW, the Italian and UnitedKingdom Governments and the Commission. At the hearing BMW, Mr Deenik,the United Kingdom Government and the Commission were represented.

The Trade Marks Directive

16.
    The Trade Marks Directive constitutes a first step in the harmonisation ofMember States' trade-mark laws. It harmonises, inter alia, the rights conferred bya trade-mark, albeit leaving the adoption of certain of its provisions to thediscretion of the Member States. Thus Article 5 provides:

'Rights conferred by a trade mark

1.    The registered trade mark shall confer on the proprietor exclusive rightstherein. The proprietor shall be entitled to prevent all third parties not having hisconsent from using in the course of trade:

(a)    any sign which is identical with the trade mark in relation to goods orservices which are identical with those for which the trade mark isregistered;

(b)    any sign where, because of its identity with, or similarity to, the trade markand the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of thepublic, which includes the likelihood of association between the sign and thetrade mark.

2.    Any Member State may also provide that the proprietor shall be entitled toprevent all third parties not having his consent from using in the course of tradeany sign which is identical with, or similar to, the trade mark in relation to goodsor services which are not similar to those for which the trade mark is registered,where the latter has a reputation in the Member State and where use of that signwithout due cause takes unfair advantage of, or is detrimental to, the distinctivecharacter or the repute of the trade mark.

3.    The following, inter alia, may be prohibited under paragraphs 1 and 2:

(a)    affixing the sign to the goods or to the packaging thereof;

(b)    offering the goods, or putting them on the market or stocking them forthese purposes under that sign, or offering or supplying services thereunder;

(c)    importing or exporting the goods under the sign;

(d)    using the sign on business papers and in advertising.

4.    Where, under the law of the Member State, the use of a sign under theconditions referred to in 1(b) or 2 could not be prohibited before the date onwhich the provisions necessary to comply with this Directive entered into force inthe Member State concerned, the rights conferred by the trade mark may not berelied on to prevent the continued use of the sign.

5.    Paragraphs 1 to 4 shall not affect provisions in any Member State relatingto the protection against the use of a sign other than for the purposes ofdistinguishing goods or services, where use of that sign without due cause takesunfair advantage of, or is detrimental to, the distinctive character or the repute ofthe trade mark.‘

17.
    The Amended Benelux Law provides, by Article 13A(1), subparagraphs (c)and (d) respectively, for the discretionary forms of protection which are specifiedin Article 5(2) and which are preserved by Article 5(5).

18.
    The rights conferred by Article 5 are, however, subject to the limits providedfor by Articles 6 and 7. Article 6 provides so far as material:

' Limitation of the effects of a trade mark

1.    The trade mark shall not entitle the proprietor to prohibit a third party fromusing, in the course of trade,

(a)    his own name or address;

(b)    indications concerning the kind, quality, quantity, intended purpose, value,geographical origin, the time of production of goods or of rendering of theservice, or other characteristics of goods or services;

(c)    the trade mark where it is necessary to indicate the intended purpose of aproduct or service, in particular as accessories or spare parts;

provided he uses them in accordance with honest practices in industrial orcommercial matters ...‘

19.
    Article 7 is as follows:

' Exhaustion of the rights conferred by a trade mark

1.    The trade mark shall not entitle the proprietor to prohibit its use in relationto goods which have been put on the market in the Community under that trademark by the proprietor or with his consent.

2.    Paragraph 1 shall not apply where there exist legitimate reasons for theproprietor to oppose further commercialisation of the goods, especially where thecondition of the goods is changed or impaired after they have been put on themarket.‘

Question (1)

20.
    By its first question the Hoge Raad asks whether, in view of the fact that,with regard to the rights conferred by a trade mark, the Directive containstransitional provisions only for the purpose of the situation described in Article5(4), Member States are 'otherwise free to lay down rules on the matter‘; alternatively does Community law in general, or the objective and tenor of theDirective in particular, have the effect that Member States are not entirely free inthat regard but must comply with specific restrictions, and, if so, which?

21.
    As explained earlier, the Hoge Raad considers that that question arises fromthe fact that the Directive was not implemented in the Benelux until 1 January

1996, while the facts giving rise to the present case appear to have occurred andthe proceedings were commenced before that date but after the date by which theDirective should have been implemented (31 December 1992).

22.
    The transitional provision in Article 5(4) to which the Hoge Raad refersstates that where, under the law of the Member State, the use of a sign under theconditions referred to in Article 5(1)(b) or Article 5(2) could not be prohibitedbefore the date on which the provisions necessary to comply with the Directiveentered into force in the Member State concerned, the rights conferred by thetrade mark may not be relied on to prevent the continued use of the sign. Othertransitional provisions are to be found in Article 3(4) and Article 4(6), which statethat any Member State may provide that the grounds of refusal of registration orinvalidity in force in that State prior to the date on which the provisions necessaryto comply with the Directive entered into force shall apply to trade marks for whichapplication was made prior to that date.

23.
    The Commission, BMW and the United Kingdom Government submit thatthe fact that transitional provisions are expressly provided for in the Directivemakes it clear that the Directive allows for no transitional provisions other thanthose specified.

24.
    However, except to the extent that Article 5(4) might apply, the Directivedoes not deal with the question whether it is the previous national law or thenational law as amended in the light of the Directive which applies to litigation inrespect of the use (as opposed to the registration) (4) of a sign which commencedbefore the date upon which the Directive came into force but which is stillcontinuing and in relation to which judgment is yet to be given.

25.
    According to BMW, it is that situation which the Hoge Raad has in mindin its formulation of the first question. BMW explains that the aim of the litigationis to obtain both an injunction in relation to future advertisements and damages inrespect of past advertisements. Although the Amended Law is now in force, theHoge Raad will have to rule upon the correctness of the judgment which was givenby the Gerechtshof at a time when the Amended Law was not yet in force. According to BMW, if the Hoge Raad considers that the Gerechtshof applied theprevious law correctly, the Gerechtshof's judgment will simply be confirmed; if,however, the Hoge Raad annuls the judgment of the Gerechtshof and eitherdecides the case itself or returns the case to the Gerechtshof, the case will have tobe decided on the basis of the Amended Law.

26.
    The view of the Advocate General in the proceedings before the HogeRaad differs slightly from that of BMW. In his view, subject to the rule that oncethe date for implementing a directive has passed national law must be interpreted

as far as possible in conformity with the directive, the law which the Hoge Raadmust apply is the previous national law, by analogy with Article 74(4) of thetransitional law concerning the new Netherlands Civil Code (Overgangswet NieuwBW). According to BMW, that article provides that the previous law applies evenif the case is returned to the lower court, unless the whole matter must be revisited. BMW explains that the Hoge Raad wishes to know whether transitional provisionsof that kind are permitted by Community law.

27.
    It appears to me that, in answer to the first question posed by the HogeRaad, it suffices to make the following points.

28.
    In so far as what is being judged is the continued use of the sign after thedate by which the Directive should have been implemented, the rights conferredby Article 5 of the Directive must be applied, unless the situation is that envisagedby Article 5(4), as discussed above. The Directive envisages no transitionalprovisions in respect of the use or registration of a sign subsequent to the dateupon which the Directive should have been implemented, other than the provisionsspecifically mentioned therein. With effect from that date, whether or not theDirective has been transposed into national law, all provisions of national law mustbe interpreted as far as possible in accordance with the Directive. (5) Wherehowever the Directive has not been properly implemented, the question may arisewhether its provisions could have direct effect in proceedings brought againstindividuals. (6)

29.
    In so far as what is being judged is the use of the sign before the date forimplementing the Directive had passed, the previous national law can apply,unaffected by the Directive. As the Court held in Salumi, (7) substantive rules are'usually interpreted as applying to situations existing before their entry into forceonly in so far as it clearly follows from their terms, objectives or general schemethat such an effect must be given to them‘. (8) There is no such need here.

30.
    I accordingly conclude in answer to the first question that, whenimplementing the Directive in national law, Member States are not free to adoptany transitional provisions other than those expressly provided for by the Directive

insofar as such transitional provisions would prejudice the complete and correcttransposition of the Directive.

Questions (2) to (5)

31.
    In so far as questions (2) to (5) are concerned, it is important to bear inmind that Mr Deenik both sold second-hand BMW cars and provided a repair andmaintenance service for such cars. It is also important to note that the BMWmarks were registered for motor vehicles (and their parts and accessories), but notfor services relating thereto.

32.
    The questions referred concern the use of Mr Deenik's statements'Specialist in BMWs‘ or 'specialised in BMWs‘ and 'Repairs and maintenanceof BMWs‘. Whilst the last statement clearly concerns the repair and maintenanceservices provided by Mr Deenik, the Hoge Raad explains that the references tospecialisation in BMW vehicles can be read as referring both to the provision of arepair and maintenance service and to the sale of second-hand BMW cars.

33.
    In my view it would not be appropriate for the Court to seek to giveguidance on the specific forms of words which are in issue in the nationalproceedings. The Court can, however, give guidance on the applicable principles.

Use of the mark in relation to goods

34.
    To the extent that the statements are used merely to advertise the fact thatsecond-hand BMW vehicles are on sale at Mr Deenik's garage, use of the trade-mark falls within Article 5(1)(a) of the Directive since it concerns use of the markin relation to the genuine article: Article 5(1)(a) entitles the trade-mark owner toprevent all third parties not having his consent from using in the course of trade'any sign which is identical with the trade mark in relation to goods or serviceswhich are identical with those for which the trade mark is registered‘.

35.
    Indeed, even the advertisement of the repairs and maintenance service fallswithin that provision in so far as it can be read as meaning simply that Mr Deenik'sgarage is capable of servicing BMW cars and not that the servicing provided thereis authorised by BMW. As the United Kingdom points out, in that case the markis being used to describe what can be repaired and serviced and is thus being used'in relation to‘ the cars, rather than Mr Deenik's services.

36.
    The question then is whether the rights conferred on BMW under Article5(1)(a) are subject to the exceptions provided for under Article 7 (which concernsthe exhaustion of trade-mark rights), or under Article 6 (which concerns, inter alia,the right to indicate the purpose of a product or service).

37.
    Article 7(1) of the Directive precludes a trade-mark owner from prohibitinguse of a trade mark 'in relation to goods which have been put on the market in theCommunity under that trade mark by the proprietor or with his consent‘. Thatappears to be the case here. Under Article 7(2), however, a trade-mark ownermay oppose the further commercialisation of his goods where there exist'legitimate reasons‘ for so doing, 'especially where the condition of the goods ischanged or impaired after they have been put on the market‘.

38.
    In its recent judgment in Christian Dior (9) the Court held that, in addition tobeing free to resell such goods, a reseller is also free to make use of the trade markin order to bring to the public's attention the further commercialisation of thosegoods; however, the trade-mark owner may object to the use of his mark in suchadvertising if it seriously damages the reputation of the mark.

39.
    Christian Dior did not concern advertising which was alleged to lead thepublic to believe the advertiser to be an authorised distributor: Dior's complaintwas, on the contrary, that the advertising in question was not up to its requiredstandards. However, in cases in which there is a genuine and properlysubstantiated likelihood of advertising leading the public to believe that the reselleris an authorised distributor, it should be permissible for the trade-mark owner torely upon the trade mark he has registered in respect of his goods in order toprevent the public being misled in that way, even if, because the undertaking inquestion is competent and respectable, there is thereby no damage to hisreputation.

40.
    It was argued in Christian Dior that the ability of a trade-mark owner toobject both to advertising which damages his reputation and to advertising whichsuggests that the reseller is an authorised distributor would effectively prohibit allparallel trade, since in upgrading their advertising to avoid the former objection,resellers would expose themselves to the latter. It must however in my view beopen to the reseller to upgrade his advertising without the conclusion being drawnthat he is an authorised distributor; and the same must apply to the provision ofservices by an independent trader. It would be an undue restriction on trade ingoods or the provision of services if his use of advertisements of a respectablestandard were to be regarded as tantamount to presenting himself as an authoriseddistributor.

41.
    Thus in circumstances such as those of the present case BMW can objectto Mr Deenik's advertising only in so far as it seriously damages the reputation ofBMW or if there is a genuine and properly substantiated likelihood that the publicwill be led to believe that Mr Deenik is authorised by BMW to sell its cars. Whether that is so is essentially a question of fact for the national court but,according to the findings of fact already made, that seems unlikely: both the

Rechtbank and the Gerechtshof considered that the advertising still in question didnot suggest that Mr Deenik was an authorised dealer and that it did not appearinaccurate to describe Mr Deenik as having specialist experience in dealing withBMW vehicles.

42.
    With reference to the last question raised by the Hoge Raad, it should benoted that BMW argues that Mr Deenik uses the BMW marks to advertise his ownbusiness since the mere fact of advertising that he stocks and repairs their productscreates a high quality image for his own business. However, if there is nolikelihood of the public being confused into believing that there is some sort oftrade connection between the reseller and the trade-mark owner, the mere fact thatthe reseller obtains an advantage by the use of the trade mark because the sale ofthe trade-marked goods gives his own business an aura of quality is not, in my view,a legitimate reason within the meaning of Article 7(2) of the Directive for a trade-mark owner to object to the advertising of his own goods. Otherwise it would beunduly difficult for the trader effectively to inform the public of the business inwhich he is engaged.

Use of the mark in relation to services

43.
    The use of the mark in relation to the repairs and maintenance serviceposes different questions since the BMW marks are registered only in relation toBMW vehicles, not services. The issue here is accordingly whether, and in whatcircumstances, a mark which is protected in relation to goods is infringed by the useof the mark in advertising services which are offered independently of those goodsand in relation to which the mark has not been registered.

44.
    In order to resolve that issue it is first necessary to consider whether servicescan be identical or similar to goods for the purposes of Article 5(1) of theDirective. It seems clear that goods and services cannot be identical so as to makeArticle 5(1)(a) applicable, but can be similar so as to make Article 5(1)(b)applicable in principle.

45.
    Goods and services may well be similar where, as in this case, the servicesprovided are for the repair or maintenance of the goods in question. But, as theUnited Kingdom points out, whether they are similar is a matter for the nationalcourt to decide. It may be appropriate for the national court to take account ofthe fact that servicing is provided at the same place as cars are sold and otherconsiderations of that kind, but the assessment of similarity is for the national court. The essential issue is whether there is sufficient similarity to give rise to a likelihoodof confusion on the part of the public, as that concept of confusion is explained bythe Court in SABEL. (10) That suggests that what is relevant in this case is whether

there is a likelihood of the public being confused into thinking that there is somesort of trade connection between the respective suppliers of the goods or servicesin question. (11) With reference to the last question raised by the Hoge Raad, it isaccordingly clearly not sufficient for the application of Article 5(1)(b), in theabsence of any such confusion, to show simply that the reseller derives advantagefrom the mere fact that he deals in the trade-marked goods because the trademark's aura of quality rubs off to some extent, giving his own business a highquality image.

46.
    As for Article 5(2) of the Directive, that provision applies (where MemberStates so provide) in cases where a registered trade mark has a reputation in theMember State and where use of a sign in relation to dissimilar goods or serviceswithout due cause takes unfair advantage of, or is detrimental to, the distinctivecharacter or the repute of the trade mark.

47.
    Again it is for the national court to apply that provision in the light of thefacts but, as the United Kingdom and the Commission point out, it seems unlikelythat the provision is applicable; in particular, it seems difficult to hold thatadvertising legitimate economic activities such as the repair of second-hand carscould be regarded as use without due cause. Nor will such use ordinarily bedetrimental in the required sense. Any detriment to BMW is perhaps causedprimarily, as the Commission suggests, by the competition offered by independentgarages to BMW's authorised distributors. Such detriment is not material from thepoint of view of trade-mark protection.

48.
    The national court also refers to Article 5(5) of the Directive, whichprovides that the preceding paragraphs of Article 5 shall not affect provisions inany Member State relating to the protection against the use of a sign other thanfor the purposes of distinguishing goods or services where use of that sign withoutdue cause takes unfair advantage of, or is detrimental to, the distinctive characteror repute of the trade mark.

49.
    Article 5(5) thus preserves the provisions of national law which affordprotection against unfair or harmful practices under the conditions mentionedtherein. Such practices, if they were in issue in the present case, could thereforebe challenged in proceedings based on such provisions of national lawindependently of the Directive. BMW considers that Article 5(5) applies to thepresent case, without however making clear which provisions of national law apply. The Commission, on the other hand, considers that the advertising in questioncannot be described as being 'other than for the purposes of distinguishing goodsor services‘ within the meaning of Article 5(5). In any event, it seems unlikely thatArticle 5(5) can apply to the present case since, like Article 5(2), it applies only touse 'without due cause‘ and, as mentioned in paragraph 47 above, it seems

difficult to hold that advertising legitimate economic activities such as the repair ofsecond-hand cars could be regarded as such use.

Article 6

50.
    The national court has put no questions directly on Article 6 of theDirective. Yet in the scheme of the Directive, although Article 5 sets out the rightsof the trade-mark owner, Article 6 imposes certain limits on those rights. Article 6was however considered by the United Kingdom Government in its writtenobservations and by BMW, the Italian Government and the Commission inresponse to a question put by the Court on the possible applicability of Article 6. The issue arises in this case essentially in relation to the provision of services by anindependent trader.

51.
    As set out above, (12) Article 6(1) provides by subparagraphs (b) and (c)respectively that the trade mark shall not entitle its proprietor to prohibit a thirdparty from using, in the course of trade, inter alia, the following: 'indicationsconcerning the kind, quality, quantity, intended purpose, value, geographical origin,the time of production of goods or of rendering of the service, or othercharacteristics of goods or services‘, or 'the trade mark where it is necessary toindicate the intended purpose of a product or service, in particular as accessoriesor spare parts‘. In each case, however, the third party must act 'in accordancewith honest practices in industrial or commercial matters‘.

52.
    BMW, observing that Article 6(1)(c) precludes the trade-mark owner fromprohibiting the use of the mark where it is 'necessary‘ to indicate the intendedpurpose of a product or service, submits that in a case such as the present thereis no such necessity.

53.
    Once again it is in my view for the national court to decide the point, if itshould arise. The Commission points out however that a question will arise underArticle 6 only if the trade-mark owner can successfully invoke one of the provisionsof Article 5. That, as we have seen, seems doubtful. The Commission adds thatthe proviso in Article 6(1) that the third party must act in accordance with honestpractices in industrial or commercial matters is consistent with the interpretationto be given to the notion which appears in Article 5(2) and (5) of the use of a signwhich without due cause takes unfair advantage of, or is detrimental to, thedistinctive character or the repute of the trade mark.

54.
    BMW submitted, with some measure of support from the ItalianGovernment, that it would be open to Mr Deenik to offer the services of carmaintenance and repair without the need to name any specific make of car. That

seems an unrealistic suggestion. As the United Kingdom Government observed atthe hearing, if Mr Deenik does in fact specialise in maintaining and repairing BMWcars it is difficult to see how he could effectively communicate that fact to hiscustomers without using the sign BMW. As mentioned earlier, BMW considersthat he benefits from using the BMW marks because they give his own business anaura of quality and that that is unfair. I agree with the United KingdomGovernment, however, that whether there is any benefit to Mr Deenik is not thekey issue. The issue is the extent to which a trader in his position should be freeto describe the nature of the services he is offering.

55.
    In my view Article 6(1) precludes the owner of a trade mark frompreventing the use of his mark by an independent trader to advertise repair andservicing of the goods covered by the mark, provided that the independent traderdoes so 'in accordance with honest practices in industrial or commercial matters‘. Again, to enable the trade-mark owner to prevent such use of the mark would bean undue restriction on the trader's freedom. However to my mind it would notbe in accordance with such practices if the advertising were so designed as to leadthe public to believe that the reseller is authorised by the trade-mark owner, (13) or,in referring to the trade-mark owner's goods, to damage seriously the reputationof the trade mark. (14) With reference to the last question posed by the Hoge Raad,it is not, however, in my view contrary to honest practices within the meaning ofArticle 6(1) merely to derive advantage from the use of a mark.

56.
    It is for the national court to assess in relation to any particular use of amark whether the conditions set out in Article 6 are fulfilled. In doing so, however,the national court should take into account the need to ensure that the concept of'honest practices in industrial or commercial matters‘ is not interpreted so broadlyas to constitute an unjustified impediment to trade or to fair competition.

Conclusion

57.
    Accordingly the questions posed by the Hoge Raad should in my opinion beanswered as follows:

(1)    Council Directive 89/104/EEC of 21 December 1988 to approximate thelaws of the Member States relating to trade marks must be interpreted asmeaning that, when implementing the Directive in national law, MemberStates are not free to adopt any transitional provisions other than thoseexpressly provided for by the Directive insofar as such transitional provisionswould prejudice the complete and correct transposition of the Directive.

(2)    Where a garage is specialised in repair and maintenance of cars of aparticular mark, and uses that mark, without the authorisation of theproprietor of the mark, to announce to the public that it carries out repairand maintenance work on those cars or that it is a specialist, or isspecialised, with regard to those cars, Articles 5, 6 and 7 of the Directivemust be interpreted as meaning that the garage is free to use that mark tobring its services to the attention of the public unless it is established thatthe use of the mark for that purpose seriously damages the reputation ofthe mark or that the use of the mark is designed to lead the public tobelieve that the garage is an authorised dealer.


1: Original language: English.


2: —    First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of theMember States relating to trade marks, OJ 1989 L 40, p. 1.


3: —    Under Article 16(1) of the Directive, Member States were to implement its provisions by28 December 1991. However, by Decision 92/10/EEC, OJ 1992 L 6, p. 35, the Councilmade use of the power conferred on it by Article 16(2) and postponed the deadline forimplementing the Directive until 31 December 1992.


4: —    See Articles 3(4) and 4(6), referred to in paragraph 22 above.


5: —    Case C-106/89 Marleasing [1990] ECR I-4135.


6: —    Cases 152/84 Marshall v Southampton and South-West Hampshire Area Health Authority[1986] ECR 723 and C-91/92 Faccini Dori v Recreb [1994] ECR I-3325.


7: —    Joined Cases 212/80 to 217/80 Amministrazione delle Finanze dello Stato v Salumi [1981]ECR 2735.


8: —    Paragraph 9 of the judgment. See also Joined Cases C-121/91 and C-122/91 CT Controland JCT Benelux v Commission [1993] ECR I-3873, paragraph 22, and Case C-261/96Conserchimica v Amministrazione delle Finanze dello Stato, judgment of 6 November 1997,not yet reported, paragraphs 16 to 18.


9: —    Case C-337/95, judgment of 4 November 1997.


10: —    Case C-251/95 SABEL v Puma, judgment of 11 November 1997.


11: —    See my Opinion in Case C-39/97 Canon, delivered on 2 April 1998.


12: —    At paragraph 18.


13: —    See paragraph 39 above.


14: —    See paragraph 38 above.