CJEU regarding the interpretation of the general wording of the ruling 'goods put on the market without the right holders consent'
18-11-2022 Print this page
EU law cannot preclude a judicial practice according to which the operative part of a decision upholding an action for infringement of an EU trade mark is drafted in general terms. Provided that the defendant enjoys the effective judicial protection of the rights that it derives from Articles 34 and 36 TFEU and Article 15(1) of Regulation 2017/1001.
Preliminairy questions:
Must the second sentence of Article 36 TFEU, read in conjunction with Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, and in conjunction with the second sentence of Article 19(1) of the Treaty on European Union, be interpreted as precluding the practice of the national courts of the Member States, which is that the courts:
– when upholding claims by a proprietor of an EU trade mark to prohibit the importation, putting on the market, offering, advertising of goods bearing the EU trade mark, to order their withdrawal from the market or to order their destruction;
– when ruling, in protective proceedings relating to the seizure of products bearing an EU trade mark, refer in their rulings to “goods which have not been put on the market within the [EEA] by the right holder or with its consent”, with the result that it is left to the enforcement authority, in view of the general wording of the ruling, to determine which items bearing the EU trade mark are subject to the injunctions and prohibitions granted (that is to say, which items have not been put on the market within the European Economic Area by the right holder or with its consent) which basis that determination on the statement of the right holder or tools provided by it (including its IT tools and databases), while the possibility of challenging the aforementioned findings of the enforcement authority before a court in declaratory proceedings is excluded or limited by the nature of the legal remedies available to the defendant in protective proceedings and in enforcement proceedings?
Answer CJEU:
Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, read in combination with the second sentence of Article 36 TFEU, Article 47 of the Charter of Fundamental Rights of the European Union. and Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, must be interpreted as not precluding a judicial practice by which the operative part of the decision upholding an action for infringement of an EU trade mark is drafted in terms which, owing to their general nature, leaves it to the authority with competence to enforce that decision to determine the products to which that decision applies, provided that, in the context of the enforcement procedure, the defendant is permitted to contest the determination of the products covered by that procedure and that a court may examine and decide, in compliance with the provisions of Directive 2004/48, which products have in fact been placed on the market in the EEA by the proprietor or with its consent.
