NEXT WEEK IN THE ECJ

Next week in the ECJ

There are a couple of flurries of excitement in the European Court of Justice next week, if you happen to be an enthusiastic IP lawyer. On Tuesday, 7 November there's a hearing before the Grand Chamber in Case C-17/06 Céline, this being a reference for a preliminary ruling from the Cour d'appel de Nancy on the following question:

"Must Article 5(1) of Directive 89/104 [the Trade Mark Harmonisation Directive] be interpreted as meaning that the adoption, by a third party without authorisation, of a registered word mark, as a company name, business name or style in connection with the marketing of identical goods, amounts to use of that mark in the course of trade, which the proprietor is entitled to stop by reason of his exclusive rights?".

Not wishing to prejudge the issue, the IPKat is tempted to conclude that the answer must be "yes", the key condition for infringement being that the unauthorised third party adopts that name "in connection with the marketing of identical goods"; asssuming that this is done in the course of trade, how can it not be infringement? Merpel ripostes: "but if the adoption is merely preparatory to actual trading, it can be in connection with the marketing of goods but not 'in the course of trade, n'est-ce pas?".

The second excitement, if you can bear to wait, comes next Thursday, 9 November, when the ECJ rules in Case C-281/05 Montex Holdings Ltd v Diesel SpA. The Opinion of Advocate General Poiares Maduro was, alas, not made available in English. The question referred for a preliminary ruling is:

"(a) Does a registered trade mark grant its proprietor the right to prohibit the transit of goods with the sign?

(b) If the answer is in the affirmative: may a particular assessment be based on the fact that the sign enjoys no protection in the country of destination?

(c) If the answer to (a) is in the affirmative and irrespective of the answer to (b), is a distinction to be drawn according to whether the article whose destination is a Member State comes from a Member State, an associated State or a third country? Is it relevant in this regard whether the article has been produced in the country of origin lawfully or in infringement of a right to a sign existing there held by the trade mark proprietor?".

Left: Montex v Diesel: a pain for trade mark owners, while third parties seek to extract the maximum from unimpeded trade conditions

The IPKat looks forward to this ruling, which will - he expects - summarise earlier ECJ rulings on similar issues and place them with a single unitary context. "What you mean", says Merpel, "is that when it comes to alleged transit infringements, you want the convenience of only having to read one ruling". Both Kats agree on one thing, though: the time and effort spent referring transit cases and exhaustion cases to the ECJ could have been saved if more time was invested in drafting answers to these totally predictable questions in the original Community legislation rather than leaving it to the court - mainly comprised of judges with little or no commercial and IP experience - to infer the answers from gappy law, pompous recitals and hopeful punts into the area where IP protection meets competition policy.