Case C-245/02

Anheuser-Busch Inc.

v

Budĕjovický Budvar, národní podnik

(Reference for a preliminary ruling from the Korkein oikeus)

(Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name)

Summary of the judgment

1. Reference for a preliminary ruling – Jurisdiction of the Court – Interpretation of an international agreement concluded by the Community and the Member States under joint competence and having a bearing on the application by national courts of Community provisions – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)

(Art. 234 EC; TRIPs Agreement)

2. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Application ratione temporis – Application to a conflict between a trade mark and a sign arising before the date of application of that agreement and continuing after that date

(TRIPs Agreement, Art. 70(1))

3. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Direct effect – None – Obligations of the national courts – Trade mark law – Application of national law in the light of the wording and purpose of the relevant provisions of both Directive 89/104 and the TRIPs Agreement

(TRIPs Agreement; Council Directive 89/104)

4. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Trade mark law – Exclusive right of the proprietor of the trade mark to prevent a third party from using a sign – Exceptions – Sign which is identical or similar to the trade mark indicating a trade name – Condition – Use of the sign in accordance with honest practices in industrial or commercial matters

(TRIPs Agreement, Arts 16(1) and 17)

5. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Trade mark law – Trade name in conflict with a trade mark – Trade name right which arose prior to the trade mark – Use of the trade name unable to be prohibited by the proprietor of the trade mark

(TRIPs Agreement, Art. 16(1))

1. Since the Community is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), as set out in Annex 1C to the Agreement establishing the World Trade Organisation, it is under an obligation to interpret its trade-mark legislation, as far as possible, in the light of the wording and purpose of that agreement.

It follows that the Court has jurisdiction to interpret a provision of the TRIPs Agreement for the purpose of responding to the needs of the judicial authorities of the Member States where they are called upon to apply their national rules with a view to ordering measures for the protection of rights created by Community legislation which fall within the scope of that agreement.

(see paras 41-42)

2. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), as set out in Annex 1C to the Agreement establishing the World Trade Organisation, approved on behalf of the European Community, as regards matters within its competence, by Decision 94/800, applies in the event of a conflict between a trade mark and a sign alleged to infringe that trade mark where that conflict arose before the date of application of the TRIPS Agreement but continued beyond that date.

In particular, the effect of Article 70(1) of that Agreement, which provides that the latter does not create obligations in respect of acts which occurred before its date of application for Members, is that the Agreement applies to situations which continue after that date.

(see paras 49, 53, operative part 1)

3. The provisions of the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs Agreement), as set out in Annex 1C to the Agreement establishing the World Trade Organisation, are not such as to create rights upon which individuals may rely directly before the courts by virtue of Community law.

However, when called upon to apply national rules with a view to ordering measures for the protection of rights in a field in which the TRIPs Agreement applies and in which the Community has already legislated, as is the case with the field of trade marks, the national courts are required under Community law to do so, as far as possible, in the light of the wording and purpose of the relevant Community provisions of both First Directive 89/104 relating to trade marks and the TRIPs Agreement.

(see paras 54-55, 57)

4. A trade name may constitute a sign within the meaning of the first sentence of Article 16(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), set out in Annex 1C to the Agreement establishing the World Trade Organisation. That provision is intended to confer on the proprietor of a trade mark the exclusive right to prevent a third party from using a sign if the use in question prejudices or is liable to prejudice the functions of the trade mark, in particular its essential function of guaranteeing consumers the origin of the goods.

The exceptions to the rights conferred by a trade mark provided for in Article 17 of the TRIPs Agreement are intended, inter alia, to enable a third party to use a sign identical or similar to a trade mark to indicate his trade name, provided that such use is in accordance with honest practices in industrial or commercial matters.

(see para. 85, operative part 2)

5. A trade name, which is not registered or established by use in the Member State where the mark with which it is alleged to conflict is registered and in which protection against the trade name in question is sought may be regarded as an existing prior right within the meaning of the third sentence of Article 16(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), as set out in Annex 1C to the Agreement establishing the World Trade Organisation, if the proprietor of the trade name has a right falling within the substantive and temporal scope of that agreement which arose prior to the trade mark and which entitles him to use a sign identical or similar to that trade mark.

It follows that the use of that trade name cannot be prohibited by virtue of the exclusive right conferred by the trade mark on its proprietor under the first sentence of Article 16(1) of the said Agreement.

(see paras 89, 100, operative part 3)

JUDGMENT OF THE COURT (Grand Chamber) 16 November 2004 (1)

(Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor's exclusive right to the trade mark – Alleged use of the sign as a trade name)

In Case C-245/02,REFERENCE for a preliminary ruling under Article 234 EC from the Korkein oikeus (Finland), made by decision of 3 July 2002, received at the Court on 5 July 2002, in the proceedings

v

THE COURT (Grand Chamber),,

composed of: V. Skouris, President, P. Jann, C.W.A. Timmermans (Rapporteur), A. Rosas and R. Silva de Lapuerta (Presidents of Chambers), C. Gulmann, R. Schintgen, N. Colneric, S. von Bahr, J.N. Cunha Rodrigues and K. Schiemann, Judges,

Advocate General: A. Tizzano,

having regard to the written procedure and further to the hearing on 27 April 2004,after considering the observations submitted on behalf of:

after hearing the Opinion of the Advocate General at the sitting on 29 June 2004,

gives the following

‘A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trade mark.’

‘For the purposes of this agreement, the term “intellectual property” refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II.’

‘1.

2.‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trade marks. …’

‘The owner of a registered trade mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trade mark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.’

‘Members may provide limited exceptions to the rights conferred by a trade mark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trade mark and of third parties.’

‘1.

2.…

4.…’

(2)

(3)

…

(5)

‘1.

…

provided he uses them in accordance with honest practices in industrial or commercial matters.’

Trade-mark law

‘Any person may use, in the course of his trade, his name, address or trade name as a trade symbol for his products unless use of that symbol might give rise to confusion with the protected trade mark of a third party or with a name, address or trade name lawfully used by a third party in his trading activities.’

‘The right to use a sign for a product under Paragraphs 1 to 3 of this law means that no one other than its proprietor may use commercially as a sign for his products a sign liable to be confused therewith, on the product or its packaging, in advertising or business documents or otherwise, including also use by word of mouth. …’

‘Signs are deemed to be liable to be confused with each other under this law only if they refer to identical or similar types of products.’

The right to trade names

‘A trade name is regarded as having been established by use where it is generally well known by the public targeted by the activity of the economic operator.’

Preliminary observations

The second question

The third question

On those grounds, the Court (Grand Chamber) rules as follows:

Signatures.