Case C-379/14, TOP Logistics – from lex mercatoria to lex markatoria?

Bacardi is one of the world’s drinks giants. Its products are traded globally. A proportion of its products ends up on the territory of the European Economic Area. Once there, the products are stored in legally-special warehouses until the world’s merchants decide whether to buy, sell, move or just hoard the products. The question in this case is whether a trade mark owner like Bacardi can really control the flow of the goods bearing its trade marks when those goods are just sitting in those special warehouses, and when it is not the legal owner of those goods? The answer in EU law seems to depend on whether the goods have been ‘imported’ because EU trade mark law allows a right holder to prohibit the ‘importing’ of trademarked goods.

Facts
Bacardi is one of the world’s major drinks companies. A proportion of Bacardi’s products end up in the European Economic Area (the EEA). One of the EEA’s key ports is Rotterdam. This Dutch port is home to many, many warehouses.

However, some of the port’s warehouses are rather special. They are governed by legal rules which are very useful to the owners of goods arriving at the port. That is to say, these warehouses function to allow goods to be stored there until the owner has decided what to do with them – normally the finding of a buyer. Once a buyer is found, the goods may be shipped onwards to another port elsewhere in the world, or they could be admitted into the EEA.

TOP Logistics is a firm that runs one of these special warehouses. In fact, its particular warehouse is both a licensed ‘customs warehouse’, and a licensed ‘tax warehouse’. This permits goods to be stored there under a variety of different customs tax and duty regimes – whichever is the most tax efficient for the owner of the goods.

And it is against this backdrop of global trade and tax-efficient warehousing that a dispute arose between Bacardi and TOP Logistics. In 2006, Bacardi requested that TOP Logistics look at, seize and attach various batches of original, non-counterfeit Bacardi goods that were believed to be in TOP Logistics’ warehouse.

An inspection of the attached goods revealed that were indeed batches of Bacardi products in the warehouse. The goods were original and not counterfeit, and they had been stored there at the behest of another Dutch company, Van Caem International.

The company of Van Caem International is a global importer and exporter of luxury branded goods. Its merchants sell imports and exports on to a variety of large and medium sized companies, who, in turn, sell the goods onto their own customers further down the chains of distribution and supply.

Besides finding the Bacardi-trademarked original products which belonged to Van Caem International in the warehouse, the inspection also revealed that the products were being held under a variety of customs procedures.

Namely, some of the trademarked original products had been given a ‘T1’ status, which, once given, meant that they were under the supervision of customs until another destination for the goods had been decided (during this time, the goods are not subject to any import duties or the EU’s commercial policy). Those goods are said to be in a ‘suspensive customs procedure’.

But some of the other Bacardi-trademarked original products in the warehouse were being held under a completely different administrative customs procedure for they had been given ‘Tax Warehouse’ status. Under that status, it is impossible to put the goods onto the market in the Community until there has been an official release for free circulation. Until that time, the goods are in a ‘suspensive duty procedure’.

There was however something significant which had happened to those goods which had been given the Tax Warehouse status. Namely, the goods with the Tax Warehouse status had formerly possessed T1 status. Furthermore, some of the seized bottles of Bacardi were also shown to have had their Bacardi product-codes removed.

Bacardi decided to sue TOP Logistics (and its former corporate incarnation, Mevi) together with the owner of the Bacardi products, the Dutch import-export company of Van Caem International. In essence, Bacardi claimed that despite the decoded Bacardi bottles being in the suspensive duty procedure and the suspensive customs procedure, these bottles had been put onto the market in the European Economic Area without Bacardi’s consent – consequently its trade mark rights had been infringed.

In that context, Bacardi pointed to the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ [1989] L40/1).

Article 5 of the Directive, entitled ‘Rights conferred by a trade mark’, is worded as follows:

1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered:

3. The following, inter alia, may be prohibited under [paragraph 1]:

(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing … the goods under the sign:
…’

Various rounds of litigation ensued but TOP Logistics and Van Caem denied liability.

At The Hague Court of Appeal
TOP Logistics and Van Caem relied on the CJEU’s judgment in Case C-405/03, Class International. Although that judgment concerned parallel-traded Acquafresh toothpaste products, it was a judgment in which the CJEU had dealt with not only the importation of original goods into the Community; goods placed under the external transit procedure or the customs warehousing procedure; but also, a trade mark proprietor who was opposing to what was happening in a warehouse.

TOP Logistics and Van Caem understood the principle in Case C-405/03, Class International to be this: if the rules governing the various suspensory procedures have been complied with, then the goods will not be deemed to be on the market in the Community. As a result, companies will not infringe any trade marks. A right holder can only object if they can establish that the goods were imported for the purpose of either offering for sale or actual sale (for either purpose would necessarily entail that the goods were put on the market in the Community).

Applied here, TOP Logistics and Van Caem believed they were in the clear: there had been no breach of procedure, the goods were not on the market, and no liability arose under EU trade mark law.

In response, Bacardi submitted that no attention should be paid to the CJEU’s judgment in Class International. The judgment was distinguishable from the present situation since Class International concerned non-Community goods which were under the supervision of customs – and that was not the situation here.

The Hague Court of Appeal could not decide which party was right. It could see no good reason to use technical customs law to say the goods were in free movement if there was no intention of having the goods traded in the EU. The Hague Court of Appeal wondered why a company would go to all the trouble of releasing the goods into free movement, paying the attendant customs duties, and complying with the various customs formalities, if there was no intention to trade the goods in the EU? Given the fact that in this case, the goods in the Tax Warehouse procedure had previously been under the T1 procedure, could not the inference be drawn that these goods had been imported into the EU for the purposes of putting the goods on the market in the EU?

If that were so, and the goods could be said to have been imported into the EU, then the judges at The Hague Court of Appeal also wondered whether Bacardi could be stopped from relying on EU trade mark law by a different plank of EU IP law. That is to say, the judges at The Hague Court of Appeal accepted that these imported goods were not really affecting the functions of Bacardi’s trade marks in any way. And in such a situation, the CJEU’s case law in Google and Interflora seemed to suggest that the trade mark holder could be prevented from objecting to what was happening to the trademarked goods (Case C-236/08 Google France SARL and Google Inc. v Louis Vuitton Malletier SA, ECLI:EU:C:2010:159; and Case C-323/09, Interflora Inc. ECLI:EU:C:2011:604).

Questions Referred
My unofficial translation of the questions asked by The Hague Court of Appeal reads:

1. In circumstances such as those in the present case in which [non EEA goods] are subsequently placed in a suspensory duty procedure, are they considered to have been ‘imported’ for the purposes of Article 5(3)(c) of Directive 89/104/EEC (codified version Directive 2008/95/EC) so that there is ‘using (of the sign) in the course of trade’ which can be prohibited by the trade mark holder on the basis of Article 5(1) of the Directive?

2. If the answer to Question 1 is in the affirmative, then in circumstances such as those in the present case is it relevant that the mere presence in a Member State of such goods (placed under a suspensory duty procedure in that Member State) neither does nor can adversely affect the functions of the mark so that the holder of the trade mark who invokes national trade marks in that Member State cannot oppose the presence of those goods?

Comment
The aforementioned ‘Class International’ judgment was a judgment of the CJEU’s Grand Chamber. The reference to the CJEU also came from The Hague Court of Appeal.

The commercial impact of the eventual judgment in Case C-379/14, TOP Logistics could be considerable. The EU is a transit hub with networks of ports, airports, and warehouses.

There may also be WTO and multi-lateral international trade components to this reference too. Although ACTA never came into force, Article 5(d) ACTA appeared to grant right holders the ability to seize goods in countries through which shipped goods passed but never entered. It remains to be seen whether an equivalent provision has been been incorporated into later ACTA-like trade agreements.

In the mean time, the ability of a trade mark right holder to stop an-EEA import of its trademarked goods under Article 5(3)(c) of the EU’s trade mark Directive 89/104, is also in the background of another reference which is currently pending before the CJEU. See further, Case C-681/13, Diageo Brands – spiriting away bad judgments with public policy.

Update – 29 June 2015
The judgment of the CJEU’s Third Chamber is due on 16 July 2015. The Curia website gives no indication of a hearing having taken place. Advocate General Bot has also not provided an Opinion.

Update – 16 July 2015
Judgment

A version of the CJEU’s judgment in Case C-379/14, TOP Logistics ECLI:EU:C:2015:497 is reproduced below. The reproduction is not authentic. Only the versions of the document published in the ‘Reports of Cases’ or the ‘Official Journal of the European Union’ are authentic. The source of the reproduction is the Eur-Lex Europa website. The information on that site is subject to a disclaimer and a copyright notice.

 

 

JUDGMENT OF THE COURT (Third Chamber)

16 July 2015 ( )

(Reference for a preliminary ruling — Trade marks — Directive 89/104/EEC — Article 5 — Products bearing a trade mark released for free circulation and placed under the duty suspension arrangement without the consent of the proprietor of the trade mark — Right of that proprietor to oppose that placing — Definition of ‘using in the course of trade’)

In Case C‑379/14,

REQUEST for a preliminary ruling under Article 267 TFEU from the Gerechtshof Den Haag (Netherlands), made by decision of 22 July 2014, received at the Court on 7 August 2014, in the proceedings

TOP Logistics BV,

Van Caem International BV

v

Bacardi & Company Ltd,

Bacardi International Ltd,

and

Bacardi & Company Ltd,

Bacardi International Ltd

v

TOP Logistics BV,

Van Caem International BV,

THE COURT (Third Chamber),

composed of M. Ilešič (Rapporteur), President of the Chamber, A. Ó Caoimh, C. Toader, E. Jarašiūnas and C.G. Fernlund, Judges,

Advocate General: Y. Bot,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after considering the observations submitted on behalf of:

–        TOP Logistics BV, by G. van der Wal and M. Tsoutsanis, advocaten,

–        Van Caem International BV, by J. S. Hofhuis, advocaat,

–        Bacardi & Company Ltd and Bacardi International Ltd, by N.W. Mulder, R.E. van Schaik and A.M.E Voerman advocaten,

–        the French Government, by D. Colas and F. Gloaguen, acting as Agents,

–        the Portuguese Government, by L. Inez Fernandes, M. Rebelo and N. Vitorino, acting as Agents,

–        the European Commission, by F. Wilman and by F.W. Bulst and L. Grønfeldt, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

Judgment

1        The request for a preliminary ruling concerns the interpretation of Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).

2        That request has been made in the context of two sets of proceedings between, on the one hand, TOP Logistics BV (‘TOP Logistics’) and Van Caem International BV (‘Van Caem’) against Bacardi & Company Ltd and Bacardi International Ltd (‘Bacardi’) and, on the other hand, Bacardi against TOP Logistics and Van Caem, concerning goods originating from Bacardi which have been introduced, without the consent of the latter, in the European Economic Area (EEA) and placed there under the duty suspension arrangement.

 Legal context

 Directive 89/104

3        Article 5(1) and (3) of Directive 89/104 stated:

‘1.      The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

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

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

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

…;

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

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

…’

4        Directive 89/104 was repealed and replaced by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), which came into force on 28 November 2008. However, having regard to the date of the facts, the cases in the main proceedings continue to be governed by Directive 89/104.

 Directive 92/12/EEC

5        Under Article 3(1) of Council Directive 92/12/EEC of 25 February 1992 on the general arrangements for products subject to excise duty and on the holding, movement and monitoring of such products (OJ 1992 L 76, p. 1):

‘This Directive shall apply at Community level to the following products …:

…,

–        alcohol and alcoholic beverages

…’

6        Article 4(b) and (c) of Directive 92/12 stated:

‘For the purpose of this Directive, the following definitions shall apply:

(b)       tax warehouse: a place where goods subject to excise duty are produced, processed, held, received or dispatched under duty-suspension arrangements by an authorised warehousekeeper in the course of his business, subject to certain conditions laid down by the competent authorities of the Member State where the tax warehouse is located;

(c)       suspension arrangement: a tax arrangement applied to the production, processing, holding and movement of products, excise duty being suspended;

…’

7        Article 5(1) of Directive 92/12 read as follows:

‘The products referred to in Article 3(1) shall be subject to excise duty at the time of their production within the territory of the Community as defined in Article 2 or of their importation into that territory.

“Importation of a product subject to excise duty” shall mean the entry of that product into the territory of the Community …

However, where the product is placed under a Community customs procedure on entry into the territory of the Community, importation shall be deemed to take place when it leaves the Community customs procedure.’

8        Article 6(1) of Directive 92/12 provided:

‘Excise duty shall become chargeable at the time of release for consumption …

Release for consumption of products subject to excise duty shall mean:

(a)       any departure, including irregular departure, from a suspension arrangement;

(b)       any manufacture, including irregular manufacture, of those products outside a suspension arrangement;

(c)       any importation of those products, including irregular importation, where those products have not been placed under a suspension arrangement.’

9        Article 11(2) of Directive 92/12 read as follows:

‘Production, processing and holding of products subject to excise duty, where the latter has not been paid, shall take place in a tax warehouse.’

10      Directive 92/12 has, as from 1 April 2010, been repealed and replaced by Council Directive 2008/118/EC of 16 December 2008 concerning the general arrangements for excise duty and repealing Directive 92/12 (OJ 2009 L 9, p. 12). However, having regard to the date of the facts, the cases in the main proceedings continue to be governed by Directive 92/12.

 Regulation (EEC) No 2913/92

11      Article 91(1) of Council Regulation (EEC) No 2913/92 of 12 October 1992 establishing the Community Customs Code (OJ 1992 L 302, p. 1), as amended by Regulation (EC) No 955/1999 of the European Parliament and of the Council of 13 April 1999 (OJ 1999 L 119, p. 1, ‘the Customs Code’), stated:

‘The external transit procedure shall allow the movement from one point to another within the customs territory of the Community of:

(a)       non-Community goods, without such goods being subject to import duties and other charges or to commercial policy measures;

…’

12      Article 92 of the same code stated:

‘1.       The external transit procedure shall end and the obligations of the holder shall be met when the goods placed under the procedure and the required documents are produced at the customs office of destination in accordance with the provisions of the procedure in question.

2.       The customs authorities shall discharge the procedure when they are in a position to establish, on the basis of a comparison of the data available to the office of departure and those available to the customs office of destination, that the procedure has ended correctly.’

13      Article 98(1) of the Customs Code provided:

‘The customs warehousing procedure shall allow the storage in a customs warehouse of:

(a)      non-Community goods, without such goods being subject to import duties or commercial policy measures;

…’

14      The Customs Code was repealed and replaced by Regulation (EC) No 450/2008 of the European Parliament and of the Council of 23 April 2008 laying down the Community Customs Code (Modernised Customs Code) (OJ 2008 L 145, p. 1). However, having regard to the date of the facts in the main proceedings, the goods mentioned at paragraph 19 of the present judgment were governed by the Customs Code.

 The cases in the main proceedings and the questions referred for a preliminary ruling

15      TOP Logistics, formerly Mevi Internationaal Expeditiebedrijf BV (‘Mevi’), is an undertaking active in the storage and transhipment of goods. It has a licence to operate a customs warehouse and an excise warehouse.

16      Van Caem is an undertaking active in the international trade in trade-marked goods.

17      Bacardi produces and markets alcoholic drinks. It is the proprietor of various trade marks for those products.

18      During 2006, at the request of Van Caem, several consignments produced by Bacardi, transported to the Netherlands from a third State, were stored with Mevi in the port of Rotterdam (Netherlands).

19      Those goods were placed under the customs suspension arrangement for external transit or customs warehousing, such goods being known as (‘T1 goods’).

20      Subsequently, some of those goods were released for free circulation and placed under the duty suspension arrangement. Accordingly, those goods left the customs suspension arrangement regulated by Articles 91, 92 and 98 of the Customs Code and were placed in a tax warehouse.

21      Not having consented to the introduction of the goods at issue into the EEA and having, furthermore, learnt that the product codes had been removed from the bottles in the relevant consignments, Bacardi had them seized and sought various orders from the Rechtbank Rotterdam (District Court, Rotterdam). For that purpose it relied on an infringement of its Benelux trade marks.

22      By judgment of 19 November 2008, the Rechtbank Rotterdam held that the introduction into the EEA of the goods at issue infringed Bacardi’s Benelux trade marks and it took some of the requested measures.

23      TOP Logistics brought an appeal before the Gerechtshof Den Haag (Court of Appeal, The Hague). Van Caem was granted leave to intervene in those appeal proceedings.

24      By interlocutory judgment of 30 October 2012, that jurisdiction ruled that, as long as the goods at issue had the status of T1 goods, there was no infringement of Bacardi’s Benelux trademarks.

25      As to whether those marks had been infringed once the goods at issue had been placed under the duty suspension arrangement, that Court stated, in its interlocutory judgment, its intention of submitting a request for a preliminary ruling.

26      In the order for reference, the Gerechtshof Den Haag states that, unlike in the case of T1 goods, any import duties which might be payable were paid for goods in a tax warehouse. Those goods have, consequently, been imported within the meaning of Directive 92/12 and released into free circulation. They have become Community goods.

27      Those findings must not, however, according to the Gerechtshof Den Haag, necessarily lead to the conclusion that the goods at issue have been imported within the meaning of Article 5(3)(c) of Directive 89/104.

28      Moreover, the Gerechtshof Den Haag has doubts whether, in relation to goods placed under the duty suspension arrangement, there can be ‘use’ ‘in the course of trade’ within the meaning of Article 5(1) of Directive 89/104 and a likelihood of an adverse effect on one of the functions of the trade mark within the meaning of the case-law of the Court.

29      In those circumstances, the Gerechtshof te Amsterdam decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘These questions concern goods originating outside the EEA which, after having been brought into the territory of the EEA (neither by the trade mark proprietor nor with its consent), are placed in a Member State of the European Union under the external transit procedure or under the customs warehousing procedure …

(1)      Where such goods are subsequently placed under a duty suspension arrangement, as in the present case, must those goods then be regarded as having been imported within the meaning of Article 5(3)(c) of Directive 89/104 with the result that there is “use (of the sign) in the course of trade” that can be prohibited by the trade mark proprietor pursuant to Article 5(1) of that directive?

(2)      If Question 1 is answered in the affirmative, must it then be accepted that in circumstances such as those in the case at issue, the mere presence in a Member State of such goods (which have been placed under a duty suspension arrangement in that Member State) does not prejudice, or cannot prejudice, the functions of the trade mark, with the result that the trade mark proprietor which invokes national trade mark rights in that Member State cannot oppose that presence?’

 The questions referred for a preliminary ruling

30      By its questions, which it is appropriate to consider together, the national court asks, in essence, if Article 5 of Directive 89/104 must be interpreted as meaning that the proprietor of a trade mark registered in one or more Member States can oppose a third party placing goods covered by that mark under the duty suspension arrangement after having introduced them, without the consent of that proprietor, into the EEA and having released them for free circulation.

31      In that regard, it should be recalled from the outset that it is essential that the proprietor of a trade mark registered in one or more Member States should be able to control the initial marketing in the EEA of goods bearing that mark (see, in particular, judgments in Zino Davidoff and Levi Strauss, C‑414/99 to C‑416/99, EU:C:2001:617, paragraph 33; Makro Zelfbedieningsgroothandel and Others, C‑324/08, EU:C:2009:633, paragraph 32; and L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraph 60).

32      For that purpose, Article 5 of Directive 89/104 confers on the trade mark proprietor exclusive rights which entitle him inter alia to prevent any third party from importing goods bearing the mark, offering the goods, or putting them on the market or stocking them for those purposes without his consent (judgments in Zino Davidoff and Levi Strauss, C‑414/99 to C‑416/99, EU:C:2001:617, paragraph 40; Van Doren + Q, C‑244/00, EU:C:2003:204, paragraph 33; and Peak Holding, C‑16/03, EU:C:2004:759, paragraph 34).

33      In this case, the goods at issue have been produced in a third State. They have been brought into the customs territory of the European Union without the consent of the proprietor of the trade mark and placed under a suspensive customs arrangement. They were then released for free circulation, which brought an end to that customs arrangement and gave rise to payment of import duties, without the consent of the proprietor.

34      It is apparent from the order for reference that the goods at issue in the main proceedings are no longer subject to a suspensive customs arrangement. Consequently, the case-law in accordance with which the placing of trade-marked goods under a suspensive customs arrangement, such as that of external transit referred to in Articles 91 and 92 of the Customs Code or that of the customs warehouse referred to in Article 98 of that code, cannot in itself infringe the exclusive right of the proprietor of the trademark (see, in particular, judgment in Philips and Nokia, C‑446/09 and C‑495/09, EU:C:2011:796, paragraphs 55 and 56 and the case-law cited), does not apply in a case such as that in the main proceedings.

35      On the contrary, the import duties having been paid for the goods at issue in the main proceedings and those having been released for free circulation, those goods have been imported within the meaning of Article 5(3)(c) of Directive 89/104 (see, to that effect, judgment in Class International, C‑405/03, EU:C:2005:616, paragraphs 43 and 44, and order in Canon, C‑449/09, EU:C:2010:651, paragraph 18).

36      Falling, moreover, within one of the categories of goods referred to in Article 3(1) of Directive 92/12, the goods at issue in the main proceedings, in accordance with Article 5(1) of that directive, also became imported goods within the meaning of that directive as soon as they left the customs arrangement.

37      Nevertheless, the doubts which the national court entertains on the question whether the proprietor of a trade mark can oppose goods, which have thus been released for free circulation without its consent, being placed under the duty suspension arrangement are, in the first place, linked to the fact that, by virtue of the rules set out in Directive 92/12, during that storage for tax purposes the excise duties are not paid and consequently the goods concerned cannot yet be released for consumption.

38      As Bacardi and the French Government observed, it follows from the wording of Article 5(3) of Directive 89/104 and also from the case-law cited at paragraph 32 of this judgment, that the proprietor of the trademark is not in any way obliged to wait for the release for consumption of the goods covered by its trademark to exercise its exclusive right. It can also oppose certain acts committed without its consent, before that release for consumption. Amongst those acts are included, in particular, the import of the goods concerned and their storage for the purpose of putting them on the market.

39      On the basis of reading Article 5(3) together with paragraph 1 of that article, it is to be held that the actions of an economic operator such as, in the present case, Van Caem, consisting of importing into the European Union goods without the consent of the proprietor of the trade mark and placing those goods under the duty suspension arrangement, also detaining them in a tax warehouse until the payment of import duties and their release for consumption, must be classified as ‘using in the course of trade any sign which is identical with the trade mark in relation to goods … identical with those for which the trademark is registered’, within the meaning of Article 5(1) of Directive 89/104.

40      It is true that, in importing and storing goods bearing a sign identical to another’s trade mark for goods identical to those in respect of which that mark is registered, that economic operator does not use that sign in the course of dealings with consumers. However, at the risk of depriving Directive 89/104 of any useful effect, the terms ‘using’ and ‘in the course of trade’ used in paragraph 1 of that article cannot be interpreted as meaning that they refer only to immediate relationships between a trader and a consumer.

41      First, concerning the notion of ‘using’, the court has previously held that there is use of a sign identical to the trade mark, within the meaning of Article 5 of Directive 89/104, where the economic operator concerned uses the sign in its own commercial communications (judgment in Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 56).

42      That is the case, for example, where an economic operator imports or sends to a warehousekeeper goods bearing a trade mark of which it is not a proprietor with a view to releasing them for marketing. If it were otherwise, the acts of import and of stocking for the purpose of placement on the market, mentioned in Article 5(3) of Directive 89/104 and normally carried out without direct contact with potential consumers, could not be qualified as ‘using’ within the meaning of that article and could not be prohibited, even though the EU legislature has expressly identified them as being prohibited.

43      Concerning the expression ‘in the course of trade’, it is settled case-law that the use of a sign identical to a trade mark constitutes use in the course of trade where it occurs in the context of commercial activity with a view to economic advantage and not as a private matter (judgments in Arsenal Football Club, C‑206/01, EU:C:2002:651, paragraph 40; Céline, C‑17/06, EU:C:2007:497, paragraph 17; and Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 50).

44      That is evidently the case where, as in the case in the main proceedings, an economic operator active in the parallel trade of trade-marked goods, imports and stores such goods.

45      By contrast, concerning the warehousekeeper such as in the present case TOP Logistics, it must be held that its provision of a warehouse service for goods bearing another’s trade mark does not constitute use of a sign identical to that trade mark for goods or services identical or similar to those in respect of which the mark is registered. Inasmuch as such a service provider permits such use by its customers, its role cannot be assessed under Directive 89/104 but must be examined, if necessary, from the point of view of other rules of law (see, by analogy, judgment in Frisdranken Industrie Winters, C‑119/10, EU:C:2011:837, paragraphs 28 to 35).

46      In the second place, the referring court questions the risk of infringement of the functions of the mark that the act of placing goods bearing another’s trade mark under the duty suspension arrangement can cause. It cites in that regard the case-law of the Court in accordance with which, in the situation referred to in Article 5(1)(a) of Directive 89/104, the exercise of the exclusive right conferred by the mark must be reserved for those cases where use of the sign by a third party adversely affects, or is liable to affect adversely one of the functions of the trade mark, irrespective of whether the function concerned is the essential function of indicating the origin of the product or service covered by the trade mark or one of the other functions of the mark (judgments in Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 79, and Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 38).

47      In that regard it should be noted that the essential function of the indication of origin serves to identify the goods or services covered by the mark as originating from a particular undertaking, that undertaking being that under the control of which the goods or services are marketed (judgment in Backaldrin Österreich The Kornspitz Company, C‑409/12, EU:C:2014:130, paragraph 20 and the case-law cited).

48      As Bacardi and the French Government have observed, any act by a third party preventing the proprietor of a registered trade mark in one or more Member States from exercising his right, recognised in the case-law cited at paragraph 32 above, to control the first placing of the goods bearing that mark on the market in the EEA, by its very nature undermines that essential function of the trade mark. The importation of products without the consent of the proprietor of the trade mark concerned and the holding of those products in a tax warehouse before their release for consumption in the European Union has the effect of depriving the proprietor of that mark of the possibility of controlling the conditions of the first placing on the market within the EEA of products bearing its trade mark. Such acts also adversely affect the function of the trade mark of identifying the undertaking from which the products originate and under whose control the initial placing on the market is organised.

49      That analysis is not invalidated by the fact that goods imported and placed under the duty suspension arrangement can subsequently be exported to a third State and thus never be released for consumption in a Member State. In that regard, it is sufficient to note that all goods in free circulation may be exported. That possibility cannot preclude the application of the rules on trade marks to goods imported into the European Union. Furthermore, exportation is also itself an act covered by Article 5(3) of Directive 89/104.

50      Having regard to all the foregoing considerations, the answer to the questions referred is that Article 5 of Directive 89/104 must be interpreted as meaning that the proprietor of a trade mark registered in one or more Member States may oppose a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor.

 Costs

51      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. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Third Chamber) hereby rules:

Article 5 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark registered in one or more Member States may oppose a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor.

[Signatures]


Language of the case: Dutch.

 

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