C-107/76

2. Questions referred for a preliminary ruling — Interlocutory proceedings for an interim order ('einstweilige Verfügung') — Reference of such cases to the Court — Proceedings on the substance of the case — Institution thereof — Possibility — Duty to refer cases to the Court — None (EEC Treaty, third paragraph of Article 177)

1. The summary and urgent character of interlocutory proceedings for an a procedure in the national court does interim order ('einstweilige not prevent the Court from regarding Verfügung') even where no judicial itself as validly seised under the remedy is available against the second paragraph of Article 177 decision to be taken in the context of whenever a national court or tribunal those proceedings, provided that each considers that it is necessary to make of the parties is entitled to institute use of that paragraph. proceedings or to require proceedings 2. The third paragraph of Article 177 of to be instituted on the substance of the EEC Treaty must be interpreted as the case and that during such meaning that a national court or proceedings the question provisionally tribunal is not required to refer to the decided in the summary proceedings Court a question of interpretation or may be re-examined and may be the validity mentioned in that article subject of a reference to the Court when the question is raised in under Article 177.

In Case 107/76

Reference to the Court under Article 177 of the EEC Treaty by the Oberlandesgericht Karlsruhe for a preliminary ruling in the action pending before that court between

1 — Language of the Case: German.

composed of: H. Kutscher, President, A.M. Donner and P. Pescatore Presidents of Chambers, J. Mertens de Wilmars, M. Sørensen, Lord Mackenzie Stuart, A. O'Keeffe, G. Bosco and A. Touffait, Judges,

Advocate-General: F. Capotorti Registrar: A. Van Houtte

gives the following

JUDGMENT

Facts and issues

The order making the reference and the product 'Valium'. The plaintiff written observations submitted under manufactures Valium under a licence Article 20 of the Statute of the Court of which it has obtained from Hoffmann-La Justice of the EEC may be summarized Roche and Co AG, Basel, and sells it in as follows: the Federal Republic of Germany under the name Valium Roche.

Another subsidiary of the Roche-SAPAC names Valium and/or Roche as a organization makes Valium in Great trade-mark, except where the user Britain under a licence from consists of placing on the market or Hoffmann-La Roche and Co AG, Basel, offering for sale the product in the and puts it on the market in packages original presentation in which it was put containing 100 and 500 tablets. It on to the market by a third party with markets the Valium at prices which are the consent of Hoffmann-La Roche and considerably lower than those charged in Co AG, Basel.

In any international trade in medicinal products. case, the plaintiff, it is argued, is The defendant purchased Valium Roche infringing the rules laid down by the from its Netherlands parent company. EEC Treaty which secure free The latter had in turn purchased it in competition (Article 30), by abusing the Great Britain in the original packages put legal provisions concerning trade-marks on the British market by the British and medicinal preparations in order to subsidiary of Hoffmann-La Roche and partition off national markets, on which

1. Is the Court of a Member State under 3. The plaintiff, which regards the conduct of the defendant as an a duty to refer a question concerning infringement of the trade-mark rights of the interpretation of Community law the undertaking from which it has under the third paragraph of Article obtained a licence, asked the Landgericht 177 of the Treaty establishing the Freiburg for an interim order European Economic Community to (einstweilige Verfügung) prohibiting the the Court of Justice of the European defendant upon pain of penalty: Communities for a ruling when this question arises during interlocutory from using in the course of its business proceedings for an interim order dealings in medicinal preparations the when in such proceedings no appeal

necessary to be made? 5. As regards the first question referred If Question (1) is answered in the concerning Article 177 of the Treaty the affirmative a ruling on the following Oberlandesgericht states: questions is requested: 'Under the second paragraph of Article 2. Is the person entitled to a trade-mark 177 the national court which has to deal right protected for his benefit both in with such questions of interpretation Member State A and in Member State may refer them to the European Court B empowered under Article 36 of the for a ruling. It is the Senate's view that in EEC Treaty, in reliance on this right, principle a reference which is in the to prevent a parallel importer from discretion of the Court is out of the buying from the proprietor of the question during an application for an mark or with his consent in Member interim order, because it is inconsistent State A of the Community medicinal with the summary nature of an preparations which have been put on application for the grant of an injunction, the market with his trade-mark which is aimed at securing the prompt lawfully affixed thereto and packaged provisional protection of legal rights. under this trade-mark, from transferring them into containers of a However under the third paragraph of different size, providing them with Article 177 of the EEC Treaty where a new packaging, affixing to such question concerning the interpretation of packaging the proprietor's trade-mark the Treaty is raised in a case pending and importing the preparations before a court or tribunal of a Member distinguished in this manner into State, against whose decisions there is no Member State B? judicial remedy under national law, that 3. Is the proprietor of the trade-mark court or tribunal shall bring the matter entitled to do this, or does he thereby before the Court of Justice. The court infringe provisions of the EEC Treaty which in any given case is called upon to — in particular those contained in make a decision against which there is Article 86 thereof — even if he no further remedy is the court or tribunal acquires a dominant position within which is under an obligation to order a the market in Member State B with reference... However there is no

an interim order. It takes the view that decision of 5 January 1976 delivered in a the expression 'judicial remedy' in the cartel case between the plaintiff and the third paragraph of Article 177 of the Bundeskartellamt (Federal Cartel Office) EEC Treaty should not be interpreted in and is of the opinion that Hoffmann-La a technical, procedural sense but can Roche occupies a dominant position. In only mean that the parties are no longer its opinion, that position is abused in so able to obtain further clarification of the far as it is used in order to maintain legal question under consideration by prices at an excessively high level.

'An application for an 6. As for the substance of the case, the interim order is also admissible where Oberlandesgericht states that under the application seeks a ruling on an domestic German trade-mark law the urgent matter in a disputed legal plaintiff could, within the limits set out relationship, in so far as that ruling in the interim order, require the appears to be necessary, notably in the defendant to discontinue the use of the case of durable legal relationships, in designations Valium and Roche as order to avoid substantial disadvantages, trade-marks. to prevent the use of force or for other reasons' (paragraph 940 of the According to the Oberlandesgericht, it is Zivilprozeßordnung). true that the fact of preventing the importation of goods which have been In proceedings where only 'prima facie transferred into other containers and to evidence' of the right and the reasons in which the plaintiff's trade-mark has been support of the adoption of the interim affixed amounts to a 'measure having measure need be adduced (paragraphs equivalent effect' within the meaning of 936 and 920 (2) of the Zivilprozeß Article 30 of the Treaty. Nevertheless the ordnung) the application for an interim conduct of the defendant is justified order is normally heard by the judge under Article 36 of the Treaty, because to hearing the main action (paragraphs 937 affect adversely the function as an (1) and 943 of the Zivilprozeßordnung). indicator of origin is to affect adversely the specific subject-matter of the Before making an interim order, the trade-mark right. court can require the payment of security (paragraphs 936 and 921 (2) of the As regards Article 86 of the Treaty, the Zivilprozeßordnung). The interim order Oberlandesgericht relies on the findings may be annulled at any time, upon reached by the Kammergericht in its application, by reason of the occurrence

applicant in those proceedings to cerning the first question institute the main action within a period referred to the Court for a to be fixed by the court. Where the preliminary ruling by the applicant does not comply with the order Oberlandesgericht Karls­ of the court the interim order is annulled ruhe

(paragraphs 926 (2) and 936 of the Zivilprozeßordnung). 1. The applicant points out that the question of the right of the national The applicant in interlocutory proceed­ courts or tribunals to refer questions to ings is required to pay damages if it the Court for a preliminary ruling in the appears that the interim order was case of interlocutory proceedings unjustified from the beginning or where (Eilverfahren) has received an answer in it is annulled on the ground that the the affirmative in the case law of the

applicant has not fulfilled his obligation Court itself: judgment of 12 November to institute the main action before the 1969 in Case 29/69, Stauder v City of court (paragraph 945 of the Zivil­ Ulm ([1969] ECR 419). prozeßordnung). As for the use that a court hearing an The order for reference was entered in interlocutory application for interim the Court Registry on 17 November measures makes of this possibility, the 1976. question should be dealt with by the latter according to its national law, taking The applicant in the main action, into account the special features of the represented by Messrs G. Greuner and procedure to be applied by it.

HOFFMANN-LA ROCHE v CENTRAFARM

Treaty. Having determined the legal Italian district courts in fact ordered cases content of those concepts, it is necessary to be referred to the Court for to verify whether, according to the preliminary rulings in every case in national rules of procedure of the court which Community law plays a part. In or tribunal referring the matter to the such cases, it would in practice be Court of Justice, the final decision given impossible to respect any obligation to by that court or tribunal at the make a reference to the Court which conclusion of the procedure referring the might arise, and the true 'solution' would case to the Court is no longer open to a probably be that all kinds of pretexts 'judicial remedy' within the meaning so would be found for not making found.

The purpose of those procedures is to reach a In nearly all the procedural laws of the decision rapidly — and, as a quid pro various States, an interim measure is not quo, to reach it on a provisional basis absolute and may be annulled upon only. The decision is of its nature subject application if the circumstances upon to confirmation in the procedure in the which the order was decided change. In main action. Learned national authors German law, a person who has wrongly and national case-law support this obtained an interim measure is also opinion. strictly liable for the damage thus caused (Gefährdungshaftung).

JUDGMENT OF 24. 5. 1977 - CASE 107/76

against which there is no judicial remedy by the parties, situations of that kind in an ordinary action. should be avoided as far as possible.

provisional inquiry is made and which are not fully established but of which The defendant is of the opinion, first, prima facie evidence is adduced only. that a main action (Klage zur They can change decisively. A Hauptsache) within the meaning of particularly striking example is furnished paragraph 926 of the German Code of by the present case, in which the Civil Procedure does not constitute a

situation concerning the facts giving rise 'judicial remedy under national law' to the third question referred to the within the meaning of the third Court for a preliminary ruling has paragraph of Article 177 of the EEC changed by reason of the judgment of Treaty. In general, learned German the Bundesgerichtshof of 16 December authors accept this point of view. 1976, which annulled the order of the Kammergericht of 5 January 1976. From In order that a given application, made the point of view of the costs for the by a party, shall constitute a 'judicial Community, as well as of the costs borne remedy' within that article, it is necessary

HOFFMANN-LA ROCHE v CENTRAFARM

paragraph 927 of the Zivil­ in interlocutory proceedings 'by the very prozeßordnung, for the annulment of the nature of the case'. It is of the opinion interim order. Where the question that a reference is not so excluded. whether the judgment in the main action is in contradiction with the interim order It is true that a significant proportion of is contested, the question is decided by learned German authors are not in the court which made the interim order. agreement with this opinion. However, that proportion of learned authors does Finally, there is no doubt that an not take into account the judgment of application made by the party who has the Court of 16 January 1964 in Case failed for the setting of a time-limit for 166/73, Rheinmühlen-Düsseldorf v the lodging of the application in the Einfuhr- und Vorratsstelle für Getreide main action does not constitute a und Futtermittel ([1974] ECR 33). 'judicial remedy' within the meaning of the third paragraph of Article 177. That An interpretation by a national court, application has to be addressed to the excluding a priori both the right and the court of first instance and it does not obligation to make a reference to the give rise to any examination as to the Court of Justice in a given form of substance of the case. The time-limit is procedure, is incompatible with the not fixed by the court but by the requirement that Community law must 'Rechtspfleger' (a court official fulfilling be interpreted uniformly. certain judicial functions). To desist from applying Article 177 in Another significant fact concerning this respect of interlocutory proceedings in point is that anything stated, proved, the field of the law on the protection of recognized or conceded in the inter­ industrial and commercial property and locutory proceedings is not deemed to on unfair competition would be a have been so done in the main action. particularly grave decision. In effect, the

greater part of disputes of that kind are obligation to refer the matter to the dealt with in interlocutory proceedings Court in the case of interlocutory without a main action ensuing therefrom. proceedings. Such proceedings and the ordinary procedure form a single entity. A distinction should be made depending Looked at as a whole, and although there on whether the court is required by its is a formal distinction, there is in national legal system to apply the law substance just one 'case pending' within fully and entirely, or whether what is the meaning of the third paragraph of involved is a procedure in which the Article 177 of the EEC Treaty.

If there were, in effect, an obligation to refer the 3. The Government of the Federal matter to the Court of Justice in the Republic of Germany points out firstly circumstances described by the court that even if the Oberlandesgericht making the reference, it could happen Karlsruhe is right in considering that a that in certain cases of urgency there reference for a preliminary ruling made would arise a situation equivalent to a as part of interlocutory proceedings can denial of justice by reason of the time in many cases be useless, because the required by an application for a purpose of proceedings of that kind is to preliminary ruling. preserve rights rapidly and on a provisional basis, nevertheless that is no Another practical disadvantage of the argument for saying, in general terms, obligation to make a reference to the that a court may not make a reference Court would arise from the fact that the under the second paragraph of Article Court would in certain circumstances be 177 of the Treaty within the context of required to deliver rulings on questions interlocutory proceedings. of interpretation which would, in fact, be A national court would be particularly of no interest at all for the purposes of inclined to refer the case to the Court of the dispute, because the arguments Justice during the course of such which led the court to grant the interim proceedings where — as in the present order emerge as irrelevant in the main case — the interim order has been action. Finally it would also be possible, granted and where the party affected by supposing that the obligation to refer the that order himself suggests that a case to the Court within the meaning of reference be made to the European Court the third paragraph of Article 177 of the

HOFFMANN-LA ROCHE v CENTRAFARM

The Government is also of the opinion The United Kingdom does not, however, that, having regard to the objectives of wish to suggest that references should Article 177 and its place in the legal not be made in cases concerning interim order of the Community, the reference in relief, but rather that the question must the third paragraph of Article 177 to a be left to the discretion of the national 'court ... against whose decisions there is court. The United Kingdom accepts that no judicial remedy under national law' there are cases where references might should not be understood as applying to well be made. An example is where it a court dealing with an interlocutory becomes apparent, in the course of the application for interim relief. proceedings, that the parties will accept the outcome of the interlocutory There would be little justification for a application as resolving their dispute and compulsory reference to the European not pursue the main proceedings. Court in circumstances where the decision of the national court would 5. The French Government does not itself be of little effect in the national express an opinion on the first question order. In the judicial system of the referred.

JUDGMENT OF 24. 5. 1977 - CASE 107/76

If the interlocutory proceedings which was not facts of the case are not contested and if subject to appeal. The judgment of the all that is involved is 'only' the Court of Justice in that case did not clarification of points of law, the court mention the slightest doubt as to the often examines the question raised with admissibility of the reference or as to the just as much care as the court hearing an Court's jurisdiction to entertain it. 'ordinary' main action, the consequence being that a decision on the substance of As regards the present dispute, the the case is no longer given. Commission argues that the Ober landesgericht Karlsruhe has explained in The Commission is of the opinion that if its order for reference the extent to this thinking is adopted, the objection which it considered the interpretation of that the urgent and summary nature of certain rules of Community law was interlocutory proceedings necessarily necessary for the purposes of the excludes any obligation to make a decision to be delivered in the main reference to the Court is also invalid.

irrelevant. Therefore the second and measures of immediate protection are third questions referred to the Court alone involved. should be answered even should it be concluded that no such obligation exists. If, however, the national practice is such that in fact interlocutory proceedings The Commission also argues that a court have the character of 'full' and or tribunal whose judgment is final in independent legal proceedings, the interlocutory proceedings is required to mandatory provisions of Community law make a reference to the Court of Justice also apply. Otherwise the Member States of the European Communities under the could at any moment avoid the third paragraph of Article 177 of the obligation to make references to the EEC Treaty where the said interlocutory Court of Justice, laid down in the third proceedings, far from serving as no more paragraph of Article 177 of the EEC than the provisional upholding of the Treaty, by adjusting their rules of right at issue until such time as judgment procedure accordingly. be delivered in the main action, in fact contribute to the definitive outcome of Nor, in the Commission's view, do the

HOFFMANN-LA ROCHE v CENTRAFARM

Moreover, the dates of Zivilprozeßordnung. the various stages of the interlocutory action in the national court show this On the other hand the provisions of clearly. Thus, the time necessary for the Italian law concerning interlocutory procedure for a reference to the Court, proceedings (Article 700 et seq. of the which represents several months, can Italian Code of Civil Procedure) make it hardly be considered as jeopardizing the clear that such proceedings are of an guarantee of legal protection. entirely subordinate nature (procedimenti sommari di urgenza).

In Register, but by 'priority'. that context, therefore, there cannot, in the Commission's opinion, be any Moreover the Oberlandesgericht Karls obligation to refer the case to the Court ruhe is right in pointing out that in order of Justice under the third paragraph of to answer the question whether a Article 177 of the EEC Treaty. reference to the Court need or need not be made, it is not necessary to determine The Commission says that as an essential whether the court below has granted or indication of the autonomous function of refused an interim order. In fact, in all interlocutory proceedings it may be cases, the decision delivered involves noted that at the time when those economic disadvantages for one of the proceedings have reached the uppermost parties which it must bear in conformity level of appeal, no main action has yet with the legal order of the Member State. been commenced and nothing suggests that such an action will be commenced. If the main action has been 'replaced' it Such is indeed the situation which is for the national court to deliver a characterizes the main action in question decision, taking into account all the in the present case. circumstances characterizing the pro

JUDGMENT OF 24. 5. 1977 - CASE 107/76

Justice and Seidel of the Federal Ministry designs and models or of the law on for Economic Affairs, and the Com­ cartels simultaneously constitute an mission, represented by its Legal Adviser, infringement of the general provision in Sven Ziegler, acting as Agent, assisted by Article 1 of the Law on Unfair

Manfred Beschel of the Legal Service, Competition (Gesetz gegen den submitted their oral arguments. unlauteren Wettbewerb), it must be concluded that the admissibility of an Those arguments included the following application for interim measures in the points: field of the protection of industrial and commercial property does not depend on 1. The plaintiff declared that the main proof of urgency. action has been pending before the Landgericht Freiburg since January 1976. 3. The Government of the Federal For that reason the Commission ought Republic of Germany pointed out that in now, according to its written ob­ that country urgency is presumed by the servations, to take the view that in the law as regards proceedings appertaining present case there is no obligation to to the field of competition. refer the case to the Court of Justice.

HOFFMANN-LA ROCHE v CENTRAFARM

Community law in the light of which the that the provision in question has in existence of an obligation to refer need mind the courts against 'whose decisions' or need not be acknowledged. there is not, speaking generally, any judicial remedy, that is to say only the 5. In answer to a question put by a courts having the power of judicial member of the Court, the Federal review or courts of appeal. However, if Government declared that it is true that that were the case, it follows that whole if Article 177 of the Treaty is interpreted areas of case-law would be excluded from literally and if particular emphasis is the Court's jurisdiction to give placed on the plural form of the word interpretation. 'decision' in the phrase 'against whose decisions there is no judicial remedy', The Advocate-General delivered his that fact may give rise to the impression opinion at the hearing on 5 May 1977.

Decision

1 By order of 7 October 1976, which reached the Court on 17 November 1976, the Oberlandesgericht Karlsruhe has referred to the Court under Article 177 of the EEC Treaty three questions on the interpretation first of the third paragraph of that article and secondly of certain other provisions of the Treaty, in particular Articles 36 and 86, considered from the point of view of their effect on the protection of trade-mark rights. Those questions have been referred to the Court in the context of proceedings brought before the German courts by an undertaking which, claiming that the trade-mark rights which it exercises in respect of certain medicinal products have been infringed by the conduct of another undertaking, has applied for an interim order (einstweilige Verfügung) prohibiting the latter to use the trade-marks at issue.

3 Under the German Code of Civil Procedure (Zivilprozeßordnung) the court having jurisdiction may, in summary proceedings, grant interim orders in cases of urgency in order to protect certain rights that are under threat. The order, granted without a hearing by the court to which application has been made, is subject to an appeal, brought by the party who has been unsuccessful, before the same court. An appeal then lies against that decision to the higher court which makes a definitive decision on the application for an interim order, without its being possible for the parties to appeal to a further court of appeal in the context of those proceedings. The party against whom an interim order has been granted may, however, by application lodged with the court of first instance, require the plaintiff to institute a main action, to which the provisions of the ordinary Code of Civil Procedure then apply. Although it often happens, especially in matters concerning the protection of industrial and commercial property, that the decision adopted in the interlocutory proceedings is accepted as the solution to the dispute, the possibility of instituting or of requiring the other party to institute the main action is not in any way without practical importance. Moreover, it appears from information given to the Court by the parties during the proceedings that the main action has in fact been instituted in the present case.

4 The third paragraph of Article 177 of the Treaty concerning the jurisdiction of the Court to give preliminary rulings on the interpretation of the Treaty and on the validity and interpretation of measures of secondary Community law provides that:

5 In the context of Article 177, whose purpose is to ensure that Community law is interpreted and applied in a uniform manner in all the Member States, the particular objective of the third paragraph is to prevent a body of national case-law not in accord with the rules of Community law from coming into existence in any Member State. The requirements arising from that purpose are observed as regards summary and urgent proceedings, such as the proceedings in the present case, relating to interim measures, where an ordinary main action, permitting the re-examination of any question of law provisionally decided in the summary proceedings, must be instituted, either in all circumstances, or when the unsuccessful party so requires. In these circumstances the specific objective underlying the third paragraph of Article 177 is preserved by reason of the fact that the obligation to refer preliminary questions to the Court applies within the context of the main action.

6 Thus the answer to the question referred must be that the third paragraph of Article 177 of the EEC Treaty must be interpreted as meaning that a national court or tribunal is not required to refer to the Court a question of interpretation or of validity mentioned in that article when the question is raised in interlocutory proceedings for an interim order (einstweilige Verfügung), even where no judicial remedy is available against the decision to be taken in the context of those proceedings provided that each of the parties is entitled to institute proceedings or to require proceedings to be instituted on the substance of the case and that during such proceedings the question provisionally decided in the summary proceedings may be re-examined and may be the subject of a reference to the Court under Article 177.

THE COURT

in answer to the questions referred to it by the Oberlandesgericht Karlsruhe by order of 14 October 1976, hereby rules:

The third paragraph of Article 177 of the EEC Treaty must be interpreted as meaning that a national court or tribunal is not required to refer to the Court a question of interpretation or of validity mentioned in that article when the question is raised in interlocutory proceedings for an interim order (einstweilige Verfügung), even where no judicial remedy is available against the decision to be taken in the context of those proceedings, provided that each of the parties is entitled to institute proceedings or to require proceedings to be instituted on the substance of the case and that during such proceedings the question provisionally decided in the summary proceedings may be re-examined and may be the subject of a reference to the Court under Article 177.

Kutscher Donner Pescatore Mertens de Wilmars Sørensen

Mackenzie Stuart O'Keeffe Bosco Touffait

Delivered in open court in Luxembourg on 24 May 1977.