Cat in a fix; fish comes to the rescue

Today the Advocate General, Mme Juliane Kokott, delivered her Opinion in Affaire C‑59/08 Copad SA v Christian Dior couture SA e.a. This Opinion gives advice to the European Court of Justice on a reference for a preliminary ruling on the following questions:

"1. Must Article 8(2) of First Council Directive No 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in the licensing contract prohibiting, on grounds of the trade mark's prestige, sale to discount stores?

2. Must Article 7(1) of that directive be interpreted as meaning that a licensee who puts goods bearing a trade mark on the market in the European Economic Area in disregard of a provision of the licensing contract prohibiting, on grounds of the trade mark's prestige, sale to discount stores, does so without the consent of the trade mark proprietor?

3. If not, can the proprietor invoke such a provision to oppose further commercialisation of the goods, on the basis of Article 7(2) of that directive?".

The IPKat's anger at finding that this Opinion was available in only 11 languages, not one of which was English, was tempered by his discovery that his talented and enterprising friend Anat Paz (Lovells) had subjected the entire Opinion to a translation by Babel Fish which, it must be said, gives a relatively good account of the AG's thoughts. You can read the Babel Fish version here. Since posting the original version of this note, the IPKat has received an extremely helpful and corrected version of the AG's conclusion from his friend Catriona Smith (Rouse Legal), which reads as follows:

"1 Article 8 paragraph 2 of Directive 89/104 ... should be interpreted in the sense that a trade mark owner can invoke the rights conferred by that mark against a licensee who has breached a clause of a licence agreement which prohibits sales to discount stores, if that sale so damages the prestige/image [different words in the Spanish and the French] of a product that it calls its quality into question.

2 Article 7 paragraph 1 of Directive 89/104 should be interpreted in the sense that a licensee who commercialises products under a mark in breach of a clause of the licence agreement only acts without the consent of the owner of the trade mark if the licensee at the same time by such commercialisation infringes the rights conferred by the mark in the sense of Article 8 paragraph 2.

3 Article 7 paragraph 2 of Directive 89/104 does not permit the owner of the trade mark to oppose the commercialisation of products bearing its mark through a discount store through the mere fact that a clause in the licence agreement prohibits sale of the products to discount stores".

The Kat is curious to see whether the full court will take so sympathetic a view.