C-223/98

ADIDAS

OPINION OF ADVOCATE GENERAL COSMAS delivered on 10 June 1998 *

I — Introduction time informed Adidas, as the trade-mark holder. A representative of Adidas inspected the goods and established that they were counterfeit. 1. In the present case the Court is asked to give a ruling on a question referred to it under Article 177 of the Treaty by the Kammarrätten i Stockholm (Administrative Court of Appeal, Stockholm). The ques- tion concerns the interpretation of certain provisions of Council Regulation (EC) 3. Subsequently, Adidas lodged an applica­ No 3295/94 of 22 December 1994 laying tion with the competent national service down measures to prohibit the release for (pursuant to Regulation No 3295/94) for free circulation, export, re-export or entry action by the Customs Office under Arti­ for a suspensive procedure of counterfeit cle 3 of the regulation in order to prevent and pirated goods. 1 the release for free circulation of the goods. The Generaltullstyrelsen (Customs and Excise Authority) granted that application on 17 February 1998. Under Regulation No 3295/94 the disputed goods could thus be detained until 17 March 1998, after which date it was considered that the national customs authorities could not Π — Facts and procedure lawfully detain the goods, since Adidas, which had not availed itself of the possibi­ lity offered by Article 6 of Regulation No 3295/94, had not brought an action 2. Adidas AG (hereinafter Adidas') is the before a court. holder in Sweden of the right in a trade mark for various sports articles and sports wear. On 16 February 1998, after carrying out a check, the Arlanda Tullmyndighet (Customs Office) (Stockholm) decided to suspend the release for free circulation of certain goods, because it believed that they were counterfeit goods, and at the same 4. Since Adidas did not know the identity of the declarant or the consignee of the goods, which were required in order for the * Original language: Greek. undertaking to be able to bring an action 1 — OJ 1994 L 341, p. 8. against them, it requested information

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of C o u n c i l R e g u l a t i o n (EEC) The customs authority shall be authorised No 2913/92 of 12 October 1992 estab- to suspend release of the goods or detain lishing the Community Customs Code, them for a period of three working days to or re-exported subject to notification'. enable the holder of the right to lodge an application for action in accordance with Article 3.'

8. The effectiveness of the system for combating trade in counterfeit goods which has been introduced by the Community 10. Article 5 of Regulation No 3295/94 regulation depends to a large extent on the then provides: '[t]he decision granting the interest shown by the trade-mark holder in application by the holder of the right shall defending his legitimate interests. The be forwarded immediately to the customs trade-mark holder is invited to apply for offices of the Member State which are the adoption of measures in respect of liable to be concerned with the goods goods which infringe his right. Under alleged in the application to be counterfeit Article 3(1) of Regulation No 3295/94, or pirated.' The decision granting the '[i]n each Member State, the holder of a application by the holder of the right right may lodge an application in writing concludes the first stage of the procedure. with the competent service of the customs The remainder of the procedure is governed authority for action by the customs autho- by the provisions of Chapter IV of the rities where the goods are placed in one of regulation at issue, which is entitled 'Con- the situations referred to in Article l(l)(a)'. ditions governing action by the customs authorities and by the authority competent to take a substantive decision'.

The customs office shall immediately V — Relevant national legislation inform the service which dealt with the application in accordance with Article 3. That service or the customs office, shall forthwith inform the declarant and the person who applied for action to be taken. 13. Paragraph 2 of Chapter 9 of the Sekre- In accordance with national provisions on tesslagen (Swedish Law on Protection of the protection of personal data, commercial Confidential Information) 3 provides that and industrial secrecy and professional and the principle of protection of confidential- administrative confidentiality, the customs ity applies to information obtained in the office or the service which dealt with the course of customs control which is not application shall notify the holder of the covered by the exception laid down in the right, at his request, of the name and third to sixth sentences of the first subpar- address of the declarant and, if known, of agraph of Paragraph 1 of Chapter 9 of that those of the consignee so as to enable the Law. Under the latter provision, informa- holder of the right to ask the competent tion obtained by the Customs Office may authorities to take a substantive decision. 2 be disclosed if it is shown that this will not The customs office shall afford the appli- result in any damage to the individual cant and the persons involved in any of the concerned. operations referred to in Article l(l)(a) the opportunity to inspect the goods whose release has been suspended or which have been detained ...'.

VI — My answer to the question referred by the national court

primarily through a system of prohibitions substantive decision on the action brought and customs controls. It should be noted by the trade-mark holder that determine that customs controls which take place at the fate of the contested goods. borders are of very great importance to the Community for another reason. If a coun- terfeit or pirated product is not detained at the border of a Member State, the product can then circulate freely within the Com- munity. 16. It is clear from the above considera- tions that the trade-mark holder has a central place in the Community system for combating the trade in counterfeit and pirated goods. It is necessary for the trade-mark holder to take the initiative, first, in order for the goods to be detained and, second, for the national authorities which are competent to take a substantive decision in the matter to impose a definitive penalty in respect of the illegal trade. Consequently, the Community system of prohibitions introduced by Regulation 15. Consequently, there has been particular No 3295/94 is largely dependent on the emphasis on the need for the customs trade-mark holder having access to exten- authorities to take action where a risk sive and exhaustive information for it to arises that goods which have been manu- operate in a satisfactory manner. For that factured in breach of intellectual property reason, the second subparagraph of Arti- rules will be placed on the market. This cle 6(1) of Regulation 3295/94 provides action consists either in 'suspending the that information must be disclosed to the release for free circulation, export or re- holder of the intellectual property right in export' of goods suspected of being coun- question. In particular, it provides for the terfeit or pirated or in 'detaining such name and address of the declarant and, if goods when they are entered for a suspen- known, those of the consignee to be sive procedure or re-exported subject to disclosed if the customs authorities are notification for as long as is necessary to satisfied that the goods correspond to the enable it to be determined whether the description of 'counterfeit or pirated goods are actually counterfeit or pirated'. 4 goods'. For such measures to be taken, it is necessary for the trade-mark holder to apply for action to be taken by the customs authorities and for the application to be granted. In exceptional cases and to ensure full protection, it is possible to detain goods 17. That is, moreover, the fundamental temporarily until the trade-mark holder difference between Regulation lodges an application or the application is No 3295/94 and Regulation (EEC) granted. In any case it is the national No 3842/86, 5 which was the precursor to authorities which are competent to take a 5 — Council Regulation (EEC) No 3842/86 of 1 December 1986 laying down measures to prohibit the release for free 4 — Eighth recital in the preamble to Regulation No 3295/94. circulation of counterfeit goods (OJ 1986 L 357, p. 1).

and was repealed by R e g u l a t i o n whether or not the detained goods are No 3295/94. Under the earlier legislation, genuine. If the identity of the declarant and/ the trade-mark holder was not granted or the consignee of goods may not be access to the information regarding the disclosed to the trade-mark holder, it is declarant and the importer of goods, even impossible for him to refer the matter to the where the authorities were satisfied that competent national authorities.

counterfeit . . .'. Regulation 3295/94, on the tradiction. Even though the trade-mark other hand, provides that information must holder must take the initiative to refer the be disclosed to the trade-mark holder at matter to the competent national authori- two stages of the procedure. First, under ties which determine whether the contested the second subparagraph of Article 6(1), goods are actually counterfeit or pirated — information is to be disclosed even before which the trade-mark holder cannot do the competent national authority has taken without knowing the identity of the persons a substantive decision (that is to say, before against whom the action must be the contested goods have been definitively brought — he is notified of the information found to be counterfeit or pirated). Second, concerning those persons only if this is information must be disclosed under Arti- done in accordance with national provi- cle 8(3) when the procedure has been sions 'on the protection of personal data, concluded and it has been established that commercial and industrial secrecy and the goods are counterfeit or pirated. professional and administrative confidenti-

On to information is directly connected to the the other hand, it is difficult to see how the extension of his role in the procedure. The Community's system for combating coun- 'task' of that person is essentially to refer terfeit or pirated goods will be able to the matter to the national authorities which function effectively if it is prohibited under are competent to take a substantive deci- national legislation to disclose information sion in order to obtain a final decision on on the declarant and, where possible, the

20. B. The problem which has just been noted lies at the heart of the question referred by the national court. 23. Before examining that question, I con- sider it necessary to address certain points in the present case which require clarifica- tion. We know that Adidas requested 21. In assessing the applicable Swedish information regarding the identity of the legislation, as cited and analysed by the consignee of the goods in question with a national court, it is apparent that the view to bringing an action before a national national law on protection of confidential court. In the absence of other information, information applies to all information con- I presume, therefore, that in Sweden it is cerning an individual's personal or financial the courts that are the authority competent circumstances obtained by the public 'to take a substantive decision' within the authorities in the course of customs con- meaning of the second subparagraph of trol. In exceptional cases, the prohibition Article 6(1) of Regulation No 3295/94. on disclosing the information in question The Court is also unaware of the extent may be lifted, if it is shown that this will to which the Swedish law might provide for not result in any damage to the individual ex officio control, whereby the courts, as concerned. the authority competent 'to take a substan- tive decision', take on the case after the customs or some other administrative authority has submitted the file, that is to say without the trade-mark holder needing to bring an action. If there is a possibility 22. In the present case, however, the for the competent national court to carry national court has pointed out that the out an ex officio control, this partially

removes the bar to the effective application release for free circulation, export, re- of Regulation No 3295/94 which otherwise export or placing under a suspensive pro- results from the fact that it is not possible cedure of goods found to be counterfeit or to disclose information to the trade-mark pirated on completion of the procedure holder. provided for in Article 6 shall be prohib- ited.' The interpretation and application of the Community provisions and the national provisions at issue must contribute to the fulfilment of that purpose.

Even though the Community legislator has recognised the existence of national provisions on the protection of personal data, commercial 26. In the view of the Commission, it is and industrial secrecy and administrative possible to grant the request made by confidentiality, the question still remains Adidas for access to the information whether a prohibition against the disclo- obtained by the customs authorities regard- sure of the information in question other ing the identity of the declarant and/or than in exceptional cases may be laid down consignee of the goods, while at the same in such national provisions. time applying the Swedish Sekretesslagen. The Commission relied in particular on the exception laid down in Paragraph 2 of Chapter 9 of the Sekretesslagen, in con- junction with the third to sixth sentences of

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sons are protected by the fact that they can take appropriate measures when they are informed of the suspicions regarding the authenticity of the goods. If the goods eventually prove in fact to be genuine, they are also able to obtain compensation for the damage they have suffered by claiming 27. The approach taken by the Commis- the security which the trade-mark holder sion is based on two arguments which are will be called upon to provide. derived from the provisions of Regulation No 3295/94. Under the second subpara- graph of Article 6(1) of Regulation No 3295/94, as soon as the competent national administrative authorities are 28. The above interpretation put forward satisfied that certain goods 'correspond to by Commission is based on the principle the description of the counterfeit or pirated that national law must be interpreted in goods', they are to inform the declarant accordance with Community law.

The principle of 'consistent interpretation' does, nowever, also apply to cases which have been checked. In the light of the concerning the application of Community regulations where legislative powers are conferred directly upon national above factors, the Commission drew the authorities by those regulations. In other words, even conclusion that, within the specific frame- though regulations by their nature do not require national measures to be taken to ensure the incorporation of the work of the application of Article 6 of regulation into national law, provision may be made for the regulation to be applied in accordance with certain existing Regulation No 3295/94, there is reason to national rules. Regulation No 3295/94 belongs to that apply the exception to the rule on protec- particular group. In such cases, I consider that the reference to the principle that national provisions must be interpreted tion of confidential information contained 'in the light' of Community law is of value.

29. If the above observations are applied to the present dispute, it must be concluded that the concern of the Court is to indicate the e x t e n t to w h i c h R e g u l a t i o n 30. D. Consequently, and despite the inter- No 3295/94 allows national legislation esting arguments put forward by the Com- which in principle prohibits the disclosure mission concerning the possibility of inter- of the identity of the declarant and/or preting the national provisions 'in the light' consignee of the goods to the trade-mark of Regulation No 3295/94, the question holder, or which permits disclosure of that referred by the national court has still not information only in exceptional cases. If been answered substantively. How far- the contested Community legislation does reaching can national restrictions be on not conflict with such a comprehensive the disclosure to the trade-mark holder of national prohibition on the disclosure of information on the declarant and consignee that information, the national court can of goods which the customs authority has dismiss the action brought by Adidas with- found to be counterfeit and still be consis- out examining further the national legisla- tent with the contested Community legisla- tion. If, on the other hand, the national tion? As has been stated above, the court should take the view that the relevant wording of Article 6 of Regulation provisions of Regulation No 3295/94 are No 3295/94 appears to contain a contra- not consistent with such a comprehensive diction, since a literal interpretation of the national prohibition on the disclosure of second paragraph of Article 6(1) is likely to information to the trade-mark holder, the lead the reader to interpret the provisions national court must, in accordance with the as giving the national legislature total free- principle of the primacy of Community dom, not only to introduce restrictions on law, seek to find a way to apply the the possibility of informing the trade-mark contested Community rules as satisfactorily holder, but also to preclude that possibility as possible. The national court may, if it so completely.

31. It is apparent from a teleologicaland respect of that damage or any other systematic interpretation of those provi- damage which those persons may suffer — sions, which is the interpretation I have for example because goods which were considered above, that the limits of the eventually found to be genuine were Member States' discretionary power with detained — is facilitated by the fact that it regard to restrictions on the information is expressly provided that the competent which is disclosed to the trade-mark holder national authorities may require the trade- are fairly strict. The following arguments mark holder to provide a security. can be made in support of that view.

32. In the light of the above considerations, to the trade-mark holder of the identity of I consider that, when the 'national provi- the declarant and the consignee of goods is sions on the protection of personal data, of considerable importance and restrictions commercial and industrial secrecy and on the disclosure of that information must professional and administrative confidenti- not jeopardise the fulfilment of the purpose ality', which are referred to in Regulation of the system. Lastly — and perhaps most No 3295/94, are applied within the specific importantly of all — the Community legis- framework of Regulation No 3295/94, this lator has introduced rules which protect the must not be done in a way which restricts declarant and the consignee of goods which the possibility of disclosing information to are subject to control so that their rights or the trade-mark holder, as provided for in interests are not damaged by the disclosure the contested provisions of the regulation, of their name and address to the trade- thereby depriving the regulation of its mark holder.

Article 6(1) of Regulation No 3295/94 create obstacles to the disclosure of infor- only to 'ask the competent authorities to mation to the trade-mark holder which are take a substantive decision'. If that infor- disproportionate to the purpose pursued. mation is used for purposes other than As far as the second and third conditions those prescribed, the trade-mark holder are concerned, I consider that national will have to make good the damage suf- restrictions and prohibitions are justified fered by the declarant or consignee as a only if the protection of the rights and

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which is provided under the system of ples of Community law. In particular it is Regulation No 3295/94 (restriction of the necessary to determine the extent to which use of the information to which the trade- the disclosure of the name and address of mark holder obtains access, provision of a the declarant and the consignee of goods security) is inadequate. In any case, clear whose authenticity has been checked is and specific grounds must be given in consistent with the fundamental rules on support of the need for the national restric- the protection of private life and free tions and prohibitions. development of the personality.

34. E. In the above assessment, I have examined the issue of the disclosure of the identity of the declarant and consignee of 36. The Court has pointed out the need to certain goods to the trade-mark holder only protect private life in two types of case in with regard to specific rules of secondary particular. First, it has done so where it has Community law, as set out in Regulation examined the nature and scope of the No 3295/94. However, it still remains to be powers of investigation which the Commis- established to what extent that specific Community legislation and the possibilities of disclosing information to the trade-mark 7 — See in particular Article F.2 of the Treaty on European holder permitted by it are compatible with Union, signed at Maastricht on 7 February 1992, and Article 6(1) and 6(2) of the Treaty on European Union, the fundamental rules and general princi- signed at Amsterdam, which recently entered into force.

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38. It is apparent from both the above- mentioned case-law and Directive 95/46 that protection for the sphere of private activity of natural and legal persons occu­ pies an important place among the legal principles introduced by the Community legal order. However, that protection nei­ ther can nor should be absolute. The Court of Justice has held that restrictions may be imposed on fundamental rights 'provided 37. The Community institutions have not that they in fact correspond to objectives of introduced comprehensive rules governing general public interest and do not consti­ the protection of personal data, commercial tute, with regard to the objectives pursued, and industrial secrecy and administrative a disproportionate and intolerable interfer­ confidentiality. It is for that reason that the ence which infringes upon the very sub­ second subparagraph of Article 6(1) of stance of the right protected'. 1 2On the Regulation No 3295/94 refers to the basis of that principle, the Court held that national provisions. However, the Commu­ an applicant for a post as an official at a nity legislator has addressed a similar issue, Community institution may not rely on the the protection of individuals with regard to right to keep his state of health secret in the processing of personal data and the free order to refuse to undergo an Aids screen­ movement of such data. This is dealt with ing test prior to appointment. 1 3 Similarly, a Community official who wishes to obtain

reimbursement of certain expenditure on gate from the provisions of the directive medical treatment from the health insur­ concerning the right of access to data, the ance fund must provide the medical infor­ obligation to inform individuals, and the mation for which he is asked and cannot quality of data in order to prevent crime, rely on medical confidentiality to circum­ for criminal investigations and prosecu­ vent that obligation. 14 tions and action in respect of breaches of ethics. 19 Lastly, exemptions from the pro­ tection given by the directive to those affected are permitted where the use of certain information 'is necessary in relation to a contract or a legal claim, where protection of an important public interest so requires, for example in cases of inter­ national transfers of data between tax or 39. This is the same spirit that inspired the customs administrations ...'. 20 authors of Directive 95/46. They did not consider that the right to protection of privacy life was absolute, which would mean a general prohibition on the selecting and processing of personal data. Rather than laying down an absolute prohibition, the directive indicates the need to ensure the balance between the interests involved having particular regard to the principle of proportionality. The processing of personal 40. The following conclusions can be data must therefore be carried out with the drawn from the above assessment of the consent of the person concerned 'or be particular issue of law examined. First of necessary 15 for the conclusion or perfor­ all, it is not unreasonable for the informa­ mance of a contract binding on the data tion which is obtained by the customs subject, or as a legal requirement, or for the authorities in carrying out their functions performance of a task carried out in the and which relates to the identity of the public interest or in the exercise of official declarant and consignee of goods subject to authority, or in the legitimate interests of a customs control to be covered by a prohi­ 16 natural or legal person ...'. The proces­ bition on the disclosure of personal infor­ sing must also relate to data which are mation, since the information falls within 'adequate, relevant and not excessive in the protected sphere of private activity. An relation to the purposes for which they are undertaking which imports and exports processed'. 17 18 Two other recitals in the goods has every reason not to want com­ preamble to Directive 95/46 are of interest petitors, those with whom it does business, to the present case. First, it is recognised and consumers to have access to informa­ that Member States may be led, by virtue of tion about its activity. However, that rule is the provisions of Community law, to dero­ not self-evident in particular cases such as that referred to in the second subparagraph of Article 6(1) of Regulation No 3295/94. 14 — See Case T-90/95 Gill ν Commission and Case T-66/98 That article provides that information must Gaspari ν Commission (cited above, footnote 9). 15 — My italics. 16 — Recital 30 in the preamble to Directive 95/46. 17 — My italics. 19 — See Recitals 43 and 44 in the preamble to Directive 95/46. 18 — Recital 28 in the preamble to Directive 95/46. 20 — Recital 58 in the preamble to Directive 95/46.

43. Further, as has been stated above, the disclosure of the identity of the consignee 41. I therefore consider that, having regard and declarant to the trade-mark holder has to the approach adopted in Article 6 of a specific purpose. The person who obtains Regulation No 3295/94, the Community that information may use it only to ask the legislator has properly balanced the exist- competent national authorities to take a ing interests, on the one hand the interests decision as to whether the goods in ques- of the declarant and the consignee of goods tion are actually counterfeit or pirated. It and on the other the interests of the trade- should be reiterated that the needs relating mark holder and the market in general. to the combating of certain infringements Even though that approach could be regar- or the administration of justice are regar- ded as entailing a restriction on the protec- ded as justifying the introduction of excep- tion of the private activity of the declarant tions to the rules adopted to protect and consignee of goods, it is nevertheless personal or professional confidentiality.21 not contrary to the general principles of Community law, because that restriction is legitimate and justified and it is consistent with the obligations stemming from the principle of proportionality.

V I I— Conclusion

46. In the light of the foregoing, I propose that the Court give the following answer to the question referred by the national court:

The second subparagraph of Article 6(1) of Council Regulation (EC) N o 3295/94 of 22 December 1994 laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods conflicts with national legislation which in principle prohibits, or permits only in exceptional cases, disclosure to the trade-mark holder of the name and address of the declarant and consignee of goods subject to customs control, which would enable the trade-mark holder to ask the competent national authorities to take a decision as to whether those goods are counterfeit or pirated.

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