C-300/98

B — Community provisions I -11312

III — Facts and questions submitted for a preliminary ruling I-11313

A — Case C-300/98 I-11313

B — Case C-392/98 I-11315

IV — Reply to the questions submitted for a preliminary ruling I-11317

A — The admissibility of the question submitted for a preliminary ruling in Case C-300/98 I-11317 B — The substance of the questions submitted for a preliminary ruling I-11319

V — Conclusion I-11343

* Original language: Greek.

I-11310

DIOR AND OTHERS

I — Introduction its framework are familiar to the Court as a result of previous cases in which questions have been raised concerning the interpreta- tion of their provisions. 2 1. In the references for a preliminary ruling made in the present case pursuant to Article 177 of the EC Treaty (now Art- icle 234 EC), the Arrondissementsrecht- bank 's-Gravenhage (District Court, The Hague, the Netherlands) and the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) have submitted questions 3. In so far as material, Article 50 of on the interpretation of Article 50 of the TRIPs, whose interpretation the national Agreement on Trade-Related Aspects of courts seek, provides: Intellectual Property Rights (hereinafter 'TRIPs') which constitutes Annex 1 C to the Agreement establishing the World Trade Organisation (hereinafter 'the WTO'), approved on behalf of the Com- munity, as regards matters within its com- petence, by Council Decision 94/800/EC of '1. The judicial authorities shall have the 22 December 1994. 1 In particular, the authority to order prompt and effective Court is asked to rule on the meaning of provisional measures: 'intellectual property right' referred to in Article 50(1) of TRIPs. However, before giving that interpretation, it is asked to rule whether it has jurisdiction in the present case to interpret Article 50 of TRIPs and whether Article 50(6) of TRIPs has direct effect. (a) to prevent an infringement of any intellectual property right from occur- ring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including II — Legal background imported goods immediately after cus- toms clearance;

...'

4. Where provisional measures have been B — Community provisions adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the 4. In order to ensure the smooth function- defendant with a view to deciding, within a ing of the internal market, Directive 98/71/ reasonable period after the notification of EC of the European Parliament and of the the measures, whether these measures shall Council of 13 October 1998 on the legal be modified, revoked or confirmed. protection of designs3 approximated the design protection laws of the Member States.

5. The fifth recital in the preamble to the directive states: '... it is unnecessary to undertake a full-scale approximation of the 6. Without prejudice to paragraph 4, pro- design laws of the Member States, and it visional measures taken on the basis of will be sufficient if approximation is lim- paragraphs 1 and 2 shall, upon request by ited to those national provisions of law the defendant, be revoked or otherwise which most directly affect the functioning cease to have effect, if proceedings leading of the internal market;... provisions on to a decision on the merits of the case are sanctions, remedies and enforcement not initiated within a reasonable period, to should be left to the national law...'. be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a 3 — OJ 1998 L 289, p. 28.

A — Case C-300/98

12. As noted in the order for reference, Dior submitted that Tuk had infringed its 8. Parfums Christian Dior SA (hereinafter trade-mark rights by selling perfume bear- 'Dior') holds the trade marks for Tendre ing the Dior trade mark, since the perfumes

I -11313

OPINION OF MR COSMAS — JOINED CASES C-300/98 AND C-392/98

in question had not been put on the market could not tell from the goods themselves within the EEA by, or with the consent of, that they were intended for the market Dior. By producing a chartered accoun- outside the EEA, no general prohibition tant's report, Tuk demonstrated that it should be imposed on Tuk for the time obtained the perfumes at issue in the being; however, there was no reason not to Netherlands and, therefore, within the grant the injunction prohibiting Tuk from EEA. The mere fact that Tuk bought the selling Dior products — bearing the perfumes in the Netherlands did not how- Tendre Poison, Eau Sauvage and Dolce ever mean that those perfumes had been Vita trade marks — unless it purchased put on the market in the EEA by, or with and obtained them from suppliers estab- the consent of, Dior. Finally, the parties lished within the EEA, who confirmed to it argued at length as to who should bear the in writing that they had obtained the goods burden of proving whether the perfumes at in question from within the EEA. issue were put on the market by Dior within or outside the EEA.

I-11314

DIOR AND OTHERS

ment, the President of the referring court, Article 177 of the Treaty, on the fol- ruling in the interlocutory proceedings: lowing question:

'Is Article 50(6) of the TRIPs Agreement to — ordered Tuk not to sell any Dior be interpreted as having direct effect in the products bearing the Tendre Poison, sense that the legal consequences set out Eau Sauvage and Dolce Vita trade therein take effect even in the absence of marks, in so far as it did not obtain any corresponding provision of national them from independent suppliers law?' which confirmed to it in writing that they had obtained those products from within the EEA;

B — Case C-392/98

— ordered Tuk to demonstrate, on a mere request to do so by Dior's legal adviser, that those conditions had been satis- 16. Wilhelm Layher GmbH & Co. KG fied, either by sending the afore- (hereinafter 'Layher Germany') designs and mentioned statements from its suppli- manufactures scaffolding including that ers to the adviser in confidentiality (if known as the 'AlliOiindsteiger'. 5 Layher the adviser agreed to confidentiality) or Netherlands (hereinafter, together with by producing a statement in that regard Layher Germany, 'Layher'), a subsidiary from a chartered accountant (if Dior of Layher Germany, is the exclusive im- was prepared to bear the related costs); porter of Allroundsteiger scaffolding for the Netherlands.

lands for a patent on 'a scaffolding system' ingly, in interlocutory proceedings before ('steigersysteem') claiming a right of prior- the President of the Rechtbank te Utrecht ity on the basis of the German patent. The (Utrecht District Court) it requested an Netherlands patent issued following this injunction prohibiting Assco, with the application expired on 7 August 1995. imposition of a periodic penalty payment in the event of non-compliance, from importing into the Netherlands or selling, offering for sale or marketing in any way whatsoever within the Netherlands the Assco Rondosteiger, in the form in which 18. Mr Van Dijk, who trades under the it was then manufactured, or its com- name 'Assco Holland Steigers Plettac ponents. Nederland', markets in the Netherlands a scaffolding system manufactured by Assco Geruste GmbH (hereinafter 'Assco Ger- many' or, together with Assco Holland Steigers Plettac Nederland, 'Assco') known as the 'Assco Rondosteiger'. The assembly system and dimensions of the latter are identical to those of Layher's Allround- 21. Layher based its application on the fact steiger scaffolding. that Assco was acting wrongfully towards it by marketing a scaffolding system which was an exact copy of the Allroundsteiger. It should be noted that, as indicated in the order for reference, under Netherlands law protection of an industrial design not 19. When Layher Germany realised that protected by an exclusive right under the the Assco Rondosteiger was basically an uniform Benelux Law on designs 6 may be identical copy of Layher's Allroundsteiger, based on the general provisions of the it brought an action against Assco Burgerlijk Wetboek (Netherlands Civil Germany and two of its directors before Code) on wrongful acts (Article 1401 et the Landgericht Köln (Cologne Regional seq. of the Civil Code until 1 January 1992; Court) seeking, in essence, an injunction thereafter, Articles 6 and 162 et seq. of the prohibiting them from offering for sale or Civil Code). marketing within Germany scaffolding and/or scaffolding components equipped, in short, with the same assembly system as that of Layher. By judgment of 27 June 1996, the Landgericht granted that applic- ation; on appeal the judgment was upheld by a decision formulated in slightly differ- 22. The President of the Rechtbank, in ent terms. essence, granted the above application. In so doing he ruled that, in so far as might be necessary, the period referred to in Art- icle 50(6) of TRIPs was one year.

'(1) Does the jurisdiction of the Court of Justice to interpret Article 50 of the TRIPs Agreement also extend to the provisions of that article where they do A — The admissibility of the question not concern provisional measures to submitted for a preliminary ruling in Case prevent infringement of trade-mark C-300/98 rights?

26. As regards the relevance of questions (2) Does Article 50 of the TRIPs Agree- submitted for a preliminary ruling, the ment, in particular Article 50(6), have Court has ruled that 'it has no jurisdiction direct effect? to rule on questions submitted by a

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OPINION OF MR COSMAS — JOINED CASES C-300/98 AND C-392/98

29. The order for reference relates to judicial proceedings which are concerned

7 — See, for example, Case C-18/93 Corsica Ferries [1994] ECR I-1783, paragraph 14, Case C-96/94 Centro Servizi Spedi- porto [1995] ECR I-2883, paragraph 45, Case C-266/96 Corsica Ferries France [1998] ECR I-3949, paragraph 27, 30. In light of the above, I consider that the and Case C-291/96 Grado and Bashir [1997] ECR I-5531, request submitted by the Arrondissements- paragraph 12. rechtbank 's-Gravenhage for a preliminary 8 — See, for example, the order in Case C-2/96 Stalino and Data [1996] ECR I-1543, paragraph 4. ruling in Case C-300/98 is inadmissible.

I-11318

DIOR AND OTHERS

31. In the first question referred for a second, that the Community institutions preliminary ruling in Case C-392/98, the have not hitherto exercised their powers in national court essentially asks whether the the field of the 'enforcement of intellectual Court of Justice has jurisdiction to interpret property rights', except in Regulation Article 50 of TRIPs where the provisions of No 3842/86 laying down measures to pro- that article are to be applied not to hibit the release for free circulation of provisional measures designed to prevent the infringement of a trade mark but to provisional measures which, as is the case in the main proceedings, are designed to protect an industrial design from copying on the basis of general rules concerning wrongful acts, particularly those relating to unfair competition. As I shall examine 9 — Opinion on the 'competence of the Community to conclude international agreements concerning services and the pro- below, the Court is required in essence to tection of intellectual property' (ECR 1-5267, paragraph rule whether it is legitimate and proper for 105).

cised. This is a complex question in which Council Directive (89/104/EEC) . . . that it is confined to the the general problem of the interrelationship approximation of national laws "which most directly affect the functioning of the internal market". In other of international, Community and national areas covered by TRIPs, no Community harmonisation measures have been adopted. That is the position as legal orders meets the regulation of institu- regards the protection of undisclosed technical informa- tional relations between the Court and the tion, as regards industrial designs, m respect of which proposals have merely been submitted, and as regards other Community institutions and national patents. With regard to patents, the only acts referred to by the Commission are conventions which are intergovern- authorities. mental in origin, and not Community acts .

I - 11319

OPINION OF MR COSMAS — JOINED CASES C-300/98 AND C-392/98

counterfeit goods. 12In other words, those of Article 50 of TRIPs is not covered by the powers are still potential as far as the harmonisation of the law on designs so that Community institutions are concerned and its practical implementation remains in actual as far as national bodies are con- principle within the competence of the cerned. Member States.

Moreover, protection against the copying of an industrial design which is afforded in 33. In Case C-392/98 the requested inter- accordance with civil law on the basis of pretation of Article 50 of TRIPs in respect general rules relating to wrongful acts, of provisional measures to protect against particularly those relating to unfair com- the copying of an industrial design which petition, falls outside the scope of Directive are adopted in accordance with civil law on 98/71. In particular, it follows from the the basis of general rules relating to wrong- seventh recital in the preamble to that ful acts, particularly those relating to unfair directive 17 and Article 16 thereof 18 that competition, relates to an area in which the protection of designs by means of provi- Community has not yet in fact exercised its sions relating to civil liability and unfair (potential) power internally; in other competition does not fall within the scope words, an area which in principle remains of the harmonisation of national legislation within the competence of the Member introduced by that directive. States.

affected by the interpretation and applica- of workers since they considered those tion of Article 50 of TRIPs in the instant provisions to fall within the specific com- case. petence of the Member States. In particular, Advocate General Darmon stated that the Court's case-law 'is quite plain as regards the Community character of the obligation imposed on Member States to comply with the external agreements concluded by the 36. In view of the above findings, can it be Community and as regards the role accepted that the Court has jurisdiction to assigned to the Court, within the frame- interpret provisions of mixed agreements, work of its jurisdiction, of interpreting their such as Article 50 of TRIPs, where those provisions with a view to their uniform provisions are applied to areas in which no application. The case-law does not, how- Community competence has yet been exer- ever, lay down any criteria for determining

. . the question whether the Court has jurisdiction to rule on the interpretation of a provision in a mixed agreement containing a commitment which only the Member States could enter into in the sphere of their own powers does not arise. Furthermore, the jurisdiction of the Court cannot be called in question 20 —Sec, for example. Case 181/73 Haegeman [1974| ECR by virtue of the fact that in the field of freedom of 449, concerning the interpretation of the association movement for workers, as Community law now stands, it agreement between the EEC and Greece, in which the is for the Member States to lay down the rules which are Court relied first of all on a structural and functional necessary to give effect in their territorv to the provisions criterion according to which such agreements concluded of the Agreement or the decisions to be adopted by the under Articles 228 and 238 of the EEC Treaty must he Association Council. As the Court held m its judgment of regarded as acts of the Community institutions 'within the 26 October 1982 in Case 104/81 HaiiptziMmit M,miz v meaning of subparagraph (b) of the first paragraph of Knpferberg (1982| ECR 3641, in ensuring respect for Article 177 of the EEC 1 reaty so that their provisions form commitments arising from an agreement concluded by the an integral part of Community law and the Court Community institutions the Member States fulfil, within accordingly has jurisdiction to give preliminary rulings the Community system, an obligation in relation to the concerning their interpretation (paragraphs 3, 5 and 6). See Community, which has assumed responsibility for due also Case 87/75 Brasami [1976] ECR 129 and Case 65/77 performance of the agreement* (paragraphs 9, 10 and 1 lj. Ritzaiiatsunba |1977| ECR 2229. Sec also Case 0 1 9 2 / 8 9 Sevmcc [1990| ECR 1-3461, 21 — Case 12/86 |1987| ECR 3719. paragraphs 8 to 12.

40. However, the Court failed to deal definitively with the matter in Hermes either, as a result of which the Hoge Raad der Nederlanden was obliged in the present 39. The inappropriateness of such a trans case to submit the relevant question for a position was also essentially recognised by preliminary ruling. Specifically, in order to Advocate General Tesauro who returned to establish its jurisdiction, the Court relied, the question in his Opinion in Hermès; 26 first, on the fact that Article 99 of Council arguing that it is lawful to grant the Court Regulation No 40/94 of 20 December jurisdiction in respect of TRIPs provisions 1993, 27 concerning the safeguarding of relating to areas for which the Member rights arising from a Community trade States retain competence, he restricted mark, authorises the adoption of 'pro- himself to certain arguments derived from visional, including protective, measures', 28 the case-law in Demirel which related to meaning that Community competence has not recognising the Court's interpretative essentially been exercised and, second, on previous case-law to the effect that where a provision can apply both to situations 24 — Cited in footnote 21 above, see point 14. railing within the scope of national law 25 — As the Netherlands Government notes in its written and to situations falling within the scope of observations, TRIPs was not signed by the Community pursuant to Article 238 of the EC Treaty (now Article 310 Community law, it is clearly in the Com-

Kttpferberg.' 27 —OJ 1994 L 11, p. 1. 26 — Cited in footnote 2 above. See, in particular, point 18 of 28 — See Hermès, cited in footnote 2 above, paragraph 27. the Opinion. 29 — Ibid., paragraph 32.

30 — The case-law referred to in paragraph 32 of Hermès (see Klemwort Benson [1995] ECR I-615, paragraph 16, a case Case C-130/95 Giloy [1997] ECR I-4291, paragraph 28, in which the Court examined whether national law and Case C-28/95 Leur-Bloem [1997] ECR I-4161, contained a direct and unconditional renvoi to Community paragraph 34) allowed the Court in particular to get law, which would have had the effect of rendering that law round the fact that, from a formal point of view, no applicable within the domestic legal order), in the present specific Community competence had yet been exercised case the adoption of Community rules by the national because (see also the assertion in paragraph 30 of Hermès) authorities, i n other words the harmonisation of the the existing Community provision, namely Article 99 of interpretations of Community and national authorities, Regulation No 40/94 concerning the provisional protect- constitutes the goal and not the point of departure. ion of rights deriving from the Community trade mark, Moreover, the Court's jurisdiction to interpret the con- despite being closely linked, did not cover exactly the tested provision of TRIPs in the circumstances in which it subject-matter of the dispute in the main proceedings, applies i n the present case is here a matter to be decided winch was the provisional protection not of a Community rather than an established fact. By contrast, in the Dzodzt trade mark but of trade marks whose international case-law (see also Hermès, cited in footnote 2 above, registration designated the Benelux countries. Specifically, paragraph 31), that jurisdiction is an established fact. after noting the substantial connection between the Moreover, it should be noted that inasmuch as, in the Community and national rules (see paragraph 28: 'It is present case, Community competence has not been exer- true that the measures envisaged by Article 99 [of Regu- cised in respect of the provisional protection of industrial lation No 40/941 and the relevant procedural rules are designs, it is not an instance where Article 50 of TRIPs can those provided for by the domestic law of the Member be applied to situations covered by Community law.

Advocate General Tesauro i n Hermès (footnote 29 of his subject to that order (see, i n this respect. Case C-346/93 Opinion).

isdiction, while justifying a finding that 43. Nevertheless, I consider that that con- certain obligations are owed by national tradiction between the extension of the courts (ad). Court's interpretative jurisdiction and the existing division of powers between the Community and the Member States is plain at first sight only. In reality, it must be acknowledged that the contradiction exists only in areas where the Member States have exclusive competence.31 However, as noted in Opinion 1/94 of the Court, in the case of TRIPs neither the Community nor the Member States have exclusive compe- tence. Their shared competence, which (aa) The institutional balance between justifies classifying TRIPs as a mixed agree- Community and national authorities ment, relates to areas which, even if they come within the competence of the Mem- ber States, are not unrelated to Community law. Moreover, the competence of the Member States is provisional and the Community institutions may at any time convert their potential competence into actual competence. 42. Extending the Court's interpretative jurisdiction to TRIPs provisions relating to areas in which no Community compe- tence has yet been exercised appears to encroach upon the competence of national authorities. Given that, for those specific areas, Community competence is only potential and, therefore, the Member States may still introduce their own rules, if the 44. It would be contrary to the requirement Court were to give a centralised and of effective application of Community law binding interpretation of the provisions in and the need to avoid future discrepancies question with regard to all the areas or conflicts in interpretation between covered by the relevant rule, an interpret- national and Community provisions to take ation which would doubtless also deter- the view that there is no Community mine the way in which those provisions are interest in those areas which still come applied, that would constitute a manifest within the competence of the Member breach of the current division of powers States. That Community interest could between Community and national author- not, of course, justify, in the context of ities. Indeed, there appears to be no justi- mixed international agreements, Commu- fication at all for requiring the national nity law having a 'gravitating effect', which courts or even national administrative would completely undermine national law, authorities — when applying the provi- as that would abolish the existing division sions of agreements to which essentially of powers between Community and only the Member State, and not the Com- munity, is party — to apply the Court's interpretation rather than their own or, 31 — See also the Opinion of Advocate General Tesauro in possibly, that of a WTO body. Hermès, cited in footnote 2 above, point 19.

national authorities. However, the Com- policy under Article 113 of the EC Treaty, munity interest is sufficient, first, to justify it explicitly indicated its intention to find seeking a common position on the part of that any abuse of procedure as regards the Community institutions and national action taken by the Community institutions authorities with regard to the question of infringes Community law. In particular, in interpretation of mixed international agree- response to the Commission's argument to ments and, second, to weaken the idea that the effect that, since TRIPs lays down rules recognising the Court's ability to determine in fields where there are no Community that common interpretative position by harmonisation measures, conclusion of that replying to questions submitted for a pre- agreement would make it possible at the liminary ruling would infringe the compe- same time to achieve harmonisation within tence of the Member States. the Community and thereby to contribute to the establishment and functioning of the common market, the Court, acting as the indisputable guarantor of the institutional/ constitutional balance imposed by the Treaty, stated as follows: 'It should be 45. It follows from the above that observ- noted here that, at the level of internal ance of the institutional balance between legislation, the Community is competent, in Community and national authorities does the field of intellectual property, to harmon- not appear to be an insurmountable obsta- ise national laws pursuant to Articles 100 cle in the search for a common interpreta- and 100a and may use Article 235 as the tion by means of recourse to the Court's basis for creating new rights superimposed interpretations provided under Article 177 on national rights, as it did in [the regula- of the Treaty. On the other hand, as I will tion] on the Community trade mark... analyse below, such recourse appears to Those measures are subject to voting rules conflict above all with the institutional (unanimity in the case of Articles 100 and balance which exists between the Court 235) or rules of procedure (consultation of and the other Community institutions. the Parliament in the case of Articles 100 and 235, the joint decision-making pro- cedure in the case of Article 100a) which are different from those applicable under Article 113. If the Community were to be recognised as having exclusive competence to enter into agreements with non-member countries to harmonise the protection of (ab) The institutional balance between the intellectual property and, at the same time, Court and the other Community institu- to achieve harmonisation at Community tions level, the Community institutions would be able to escape the internal constraints to

which they are subject in relation to not yet been exercised amounts to substi- procedures and to rules as to voting.' 32 tuting the Court's powers for the compe- tence of the other Community institutions to harmonise national legislation in the field of intellectual property in accordance with the provisions of the Treaty. That substitution is certainly not limited merely to the fact that the Court will interpret the 47. I consider that the Court would not provisions in question. It can be detected accord to itself that which it refused the principally in the point in time at which the other Community institutions. That is to Court's interpretative jurisdiction is exer- say, it would not itself venture to place cised and not in the scope of that jurisdic- constraints, at least at the level of inter- tion. 34 In particular, it lies in the fact that pretation, on the future harmonisation of the above interpretation will take place not the fields in question, when the (potential) in the context of the (direct or incidental) competence to give opinions and make interpretation or the (direct or incidental) decisions in respect of that harmonisation review of the validity of the measures belongs to other Community institutions, which the competent Community institu- namely the Council, the Commission and tions have taken or of their failure to adopt the European Parliament, which are measures, but even before any legislative obliged to operate within the procedural initiative on the part of the above institu- framework laid down by the Treaty. tions. Where such an initiative has been taken by those institutions, the interpreta- tion of its legal basis by the Court when exercising its powers of review or its jurisdiction under Article 177 of the Treaty — interpretation which clearly

On the (potential) Community competence has other hand, it is in no way inherent in that institutional role for the Court to take a legislative initiative with regard to harmo- 32 — See Opinion 1/94, cited in footnote 9 above, paragraphs 59 nising national legislation. Interpreting the and 60 (emphasis added). contested provision of TRIPs would 33 — Irrespective of the questions raised by formal determina- amount to such an initiative in the instant tion of the effects of an interpretative ruling made by the Court, determination which is defined by concepts such as res judicata and erga omnes effect, there is no doubt that, in any event, the operative part of such an interpretative ruling is equivalent to a reformulation of the interpreted provision, which is freed from the doubts initially expressed with respect to its meaning. In this way the 34 — Assessment of an institution's competence does not consist Court's interpretation is embodied in the interpreted rule, merely in examining its scope, but also in analysing the with which it constitutes an integral conceptual whole, significance of the point in time at which it is exercised.

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case. Given that, following the conclusion nity or national implementing measure. At of that agreement, any exercise of Com- first sight, in such a case the interpretation munity competence in relation to harmon- of the provision does not affect the way in ising national legislation in the field of which it is applied because, in reality, there intellectual property is at the same time an is actually no question of application in the act implementing that agreement (to the sense of exercising a discretionary power extent of course that it falls within the or, in other words, because the Court's agreement's scope), the interpretation re- interpretation is limited to the heart of the ferred to above would in practice con- meaning of the contested provision, which strain — at least so far as concerns its cannot be altered however the competent compatibility with the international rules Community institutions apply the provi- flowing from TRIPs 35 — not only the sion. outcome of the dispute pending before the national court, but also the future exercise of the (hitherto potential) Community competence. 36

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paradoxical and contradictory position exercised would constitute pursuit of a that the Court has jurisdiction to interpret policy of judge-made law in conflict with the contested provision only in order to the constitutional logic of the Treaty and declare that it does not have direct effect. would be difficult to justify on grounds of expediency.

Second, if it is considered that the contested provision does have direct effect and that it may be applied in conformity with the (ac) The issue of the uniform interpretation interpretation given to it by the Court of TRIPs without the need for implementing mea- sures on the part of Community and national bodies, the interpretation in con- junction with the direct effect would amount to an internal harmonisation of national legislation in respect of the issues governed by that provision which concern 52. The main objections that could be the main proceedings. However, inasmuch raised against restricting the Court's inter- as such harmonisation would be achieved pretative jurisdiction solely to TRIPs provi- on the basis of a provision of an inter- sions relating to areas in which Community national agreement of the Community competence has already been exercised are without observing the rules as to compe- connected with the often invoked need for tence and procedure laid down by the all the provisions of mixed international Treaty, that would amount to an abuse of agreements to be interpreted uniformly. procedure expressly precluded by the Court in Opinion 1/94. 38

establish precisely whether a given provi- sional measures which give rise to trade sion falls within the Community preserve disputes with non-member States and (too) or solely within the domestic pre- which therefore require, by definition, uni- serve. Nor can the possibility be ruled out form application. Finally, the Commission that a given national interpretation may observes that the WTO Agreement consti- affect the application of Community provi- tutes a uniform whole and intellectual sions and/or the functioning of the system property rights are not detached from the as a whole.' 39 rest of the agreement.

rights. According to the Commission, such a situation would not be acceptable. First of all, given the close link between the substance of an intellectual property right and its judicial protection, it would be incomprehensible that there should be uni- 55. Finally, the view is expressed that the form interpretation of the substance of the Court must have jurisdiction to give pre- right, but divergent interpretations of the liminary rulings on all the provisions of measures for its protection.40 Moreover, it mixed agreements so as to ensure their would be equally unacceptable, vis-à-vis uniform interpretation and, consequently, the Community's trading partners, for the their uniform application within the Com- interpretation of the provisions relating to munity, particularly bearing in mind the judicial protection, and particularly provi- Community's interest in not being held sional protection measures, to vary for responsible for infringements committed by certain intellectual property rights but the Member States.

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ment. Consequently, the internal division of coherent system in interpreting the provi- their powers is of importance only within sions of agreements annexed to the WTO the Community itself. Second, the above Agreement, and in particular of TRIPs, it is view is based on the assumption that the to be noted first of all that the possibility Community is responsible vis-à-vis every that different interpretations may exist is party to a mixed agreement so that it might not necessarily indicative of an incoherent be held responsible for infringing the rele- system.42 In other words, it is in no way vant provisions of an agreement irrespect- contradictory that the meaning of a provi- ive of who has committed the infringe- sion should vary depending on the matter ment. 41 to which it is applied (in the present case, an intellectual property right), the body interpreting it (in the present case, the Court or the national courts) and the relevant legal framework (in the present case, Community or national).

42 — Logically it is to be expected that the interpretation and application of any legal provision, and therefore also of a 57. First, as regards the demand for uni- provision such as Article 50 of TRIPs, should vary according to the particular area in which it is applied form application justified by the need for a without that necessarily meaning that the provision has not been interpreted consistently with the provisions with which it forms a whole. Moreover, such variation is all the more expected when altering the essential interpretative context results in another body being competent for that 41 — For the development of these arguments, see, for example, interpretation, as is the situation in the present case. the Opinion of Advocate General Tesauro in Hermès, points 14, 18 and 20. 43 — Judgment cited in footnote 2 above, paragraph 36.

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interpretation which would resolve any issue. In addition to the considerations set disputes at the institutional level, but is out above with regard to the institutional still inspired by the desire to promote balance between the Court and the other friendly settlements, that is to say to accept Community institutions, 45 it should be coordination of the different interpreta- noted that, despite its profound political tions and applications of the provisions of importance, from a legal point of view the the agreements. In so far as the scope of the question of direct effect is no different from options available to, and obligations any other question of interpretation. imposed on, the Contracting Parties by the agreement at issue is thus determined by negotiation, it would not be appropriate to seek to fix, by judicial decision, an a priori uniform interpretation of the agree- ment's provisions.

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OPINION OF MR COSMAS — JOINED CASES C-300/98 AND C-392/98

applied in Community Member States with would be no ground for concluding inter- a federal structure. national agreements other than those for which the Community has exclusive com- petence.

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the Community. Despite the undoubted Court of Justice and national courts in usefulness of a uniform interpretation of accordance with Article 177 of the Treaty. the provisions of the Community's interna- tional agreements relating to areas in which the Community has not yet exercised its (potential) competence, the strict and bind- ing nature of the Court's rulings on ques- tions submitted for a preliminary ruling does not appear to be compatible with the flexibility and adaptability required by the coordination of a common Community and Member State position in the context of negotiating, concluding and implementing agreements, such as those annexed to the WTO Agreement which, inter alia, are governed by 'the principle of reciprocal 68. In order for the Court to play an and mutually advantageous arrange- effective coordinating role, it would have ments'. 50 More specifically, it is far too to operate not as the body primarily simplistic to believe that the fragmentary responsible for the authoritative interpreta- nature of a preliminary ruling on a question tion of international agreements within the which might be raised in the context of a framework of its cooperation with national particular dispute before the national courts required by Article 177 of the courts and is circumscribed by the matters Treaty, but rather as one of the bodies of law and fact set out by the national court responsible for the formulation of unity in the international representation of the can in any event effectively coordinate joint Community (possibly, as a preliminary Community and Member State action with consultative body or as an a posteriori a view to the application of an inter- monitoring and authorisingbody in respect national agreement-based obligation. On of negotiations carried out).

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of the EC Treaty (now, after amendment, the need to ensure unity in the international Article 300(6) EC). 51 It may be difficult to representation of the Community could not achieve those changes in the Court's func- justify departing from the hitherto dynamic tion by extending its interpretative jurisdic- division of powers either between the tion in reply to questions submitted for a Community and the Member States or preliminary ruling, particularly having between the Court and the other Commun- regard to the statement made by the Court ity institutions. Moreover, accepting that itself in Kleinwort Benson, 52namely: 'It the Court has primary jurisdiction to reply cannot be accepted that the replies given by to questions submitted for a preliminary the Court to the courts of the contracting ruling on the interpretation of provisions of states are to be purely advisory and without mixed international agreements relating to binding effect. That would be to alter the areas which still remain within the com- function of the Court, as envisaged in the petence of the Member States seems to be Protocol of 3 June 1971, cited above, an inappropriate means of ensuring effec- namely that of a court whose judgments tive coordination of the required united are binding'. 53 international representation.

70. It follows from the above observations that the Court is not to declare that it has jurisdiction to interpret Article 50 of TRIPs 69. It is therefore apparent that, as Com- in a case, such as the instant case, where the munity law now stands, the need for application of that article is concerned with systemically correct interpretation and uni- an area in which Community competence form application of the WTO agreements has not yet been exercised. within the Community in combination with

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jurisdiction. Like all national authorities, for the Community to have unity of national courts are obliged to participate in international representation cannot take the development of close cooperation away the albeit restricted autonomy of between Community and national author- either party. ities to ensure, as indicated above, the necessary unity in the international repre- sentation of the Community. 5 4

74. Next, the above procedure can be based on the experience gained from exist- 72. In this connection, I consider that it ing procedures of sincere and open co- would be useful for the national court if the operation which give expression to Arti- Court of Justice were to elaborate further cle 10 EC (formerly Article 5 of the EC on that obligation. Of course, the Court Treaty). In particular, it must be accepted does not have jurisdiction to determine the that the national authorities can address nature of the relations which are to be questions to the competent Community developed between the national authorities, authorities, particularly the Council and particularly between the referring court and the Commission, seeking information and other national authorities, in order to opinions on the interpretation of a provi- define the positions of the Member State sion of a mixed international agreement. on the basis of which the latter will The cooperation established between the cooperate with the Community authorities. Commission and national courts in relation However, it is worthwhile for the Court to to the application of Articles 81 EC and 82 provide certain details useful for defining EC (formerly Articles 85 and 86 of the EC the cooperation which must generally be Treaty) provides a useful example of estab- developed between the national authorities, lishing a cooperation procedure between including the referring court, and the Community and national authorities. 55 Community institutions.

In other words, while the Court lacks deviates from the interpretation adopted by jurisdiction to reply to questions submitted the Court. 57 for a preliminary ruling which relate to provisions of mixed international agree- ments concerning areas which remain within the competence of the Member States, nevertheless national authorities, and therefore national courts, are obliged to give serious consideration to any rulings made by the Court interpreting the same or connected provisions that concerned areas in which Community competence has already been exercised. In particular, when 76. The foregoing observations relating to the Court has delivered a judgment inter- the obligation on national courts to co- preting the general system established by an operate closely with the Community insti- international agreement, it is logical that tutions and to contribute to the Commu- the national courts should not be able to nity's unity of international representation ignore that judgment. Although they do not make it clear that, as Community law now have a strict procedural obligation to stands, the need for practical harmonisa- follow the interpretation adopted by the tion, first, of observance of the division of Court, 56 the obligation on them to coop- powers within the Community between erate closely with the Community autho- Community and national authorities and, rities and the fact that the interpretation secondly, of a correct, effective and mutual adopted by the Court is binding on all approach to the Community's international Community institutions means that they obligations can only be based on pro- are at least obliged not to deviate from that cedures and obligations falling within an interpretation without a specific reason. In alternative legal framework often marked other words, I consider that the national by a lack of strictness (soft law).

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the latter and the latter in turn instils its In particular, after examining in that judg- relativity and flexibility in the former. ment the nature and broad logic of the WTO agreements and, above all, the mechanism for dispute settlement (which also covers TRIPs) 60 and the lack of reciprocity as regards the direct application of the provisions of those agreements, the Court ruled that those provisions are not among the rules in the light of which it reviews the legality of measures adopted by (b) The direct effect of Article 50(6) of the Community institutions, save for two TRIPs (sole question in Case C-300/98 and classic exceptions, namely where the Com- second question in Case C-392/98) munity intended to implement a particular obligation assumed in the context of the WTO or where the Community measure expressly refers to the precise provisions of the WTO agreements. 61

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OPINION OF MR COSMAS — JOINED CASES C-300/98 AND C-392/98

measure. In other words, since the nature 81. Second, as regards Case C-392/98, the and broad logic of the WTO agreements national court must take account of the prevent their provisions from having direct Court's judgment in Portugal v Council, 66 effect, 62 analysing the specific content of even if the Court disclaims interpretative the TRIPS provision at issue is superfluous. jurisdiction and does not rule on the question of the direct effect of the contested provision. In any event, any ruling by the national court which introduces a divergent interpretation should be explained by spe- cific and detailed reasons in accordance with the requirement for close cooperation between Community and national bodies in order to ensure unity in the international 79. Finally, the general exclusion of direct representation of the Community. 67 effect of the above provision should be accompanied by two more specific observ- ations in relation to the particular questions raised by each of the joined cases.

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ensure unity in the international represent- that the Court should accept jurisdiction, ation of the Community. the following observations may be useful.

85. The term 'intellectual property right' (c) The interpretation of 'intellectual prop- used in Article 50(1 )(a) of TRIPs must be erty right' for the purposes of Article 50(6) interpreted in the light of Article 1(2) of TRIPs (third question in Case C-392/98) which states that 'for the purposes of this Agreement, the term "intellectual prop- erty" refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II'. 83. In the third question submitted for a preliminary ruling by the Hoge Raad der Nederlanden, the Court is asked to deter- mine whether where, as in the main pro- ceedings, an action lies under national civil law against the copying of an industrial design, on the basis of the general rules 86. In the instant case, the above provision concerning wrongful acts, and in particular refers essentially to Section 4 ('Industrial those relating to unfair competition, the designs') of Part II ('Standards concerning protection thus afforded to the holder of the availability, scope and use of intellect- the right must be regarded as an 'intellect- ual property rights') of TRIPs and, in ual property right' within the meaning of particular, to Articles 25 and 26 which Article 50(1) of TRIPs. respectively govern the requirements for, and scope of, the protection of industrial designs.

known design features and, second, that owner's consent from making, selling or protection is not to extend to designs importing articles bearing or embodying a dictated essentially by technical or func- design which is a copy, or substantially a tional considerations. copy, of the protected design, when such acts are undertaken for commercial pur- poses; (ii) that the parties may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably 88. Those conditions are the result of a prejudice the legitimate interests of the compromise and are designed to cover the owner of the protected design, taking different types of protection in force in the account of the legitimate interests of third territory of the Contracting Parties. 69 It parties; and (iii) that the duration of appears that the parties may choose protection available is to amount to at between the criterion of a new design and least 10 years. that of an original design or determine in their discretion the scope of both terms. Furthermore, it could be argued that the term 'independently created' is rather sub- jective, while the term 'new' is more objective. 70 Finally, in my view the Con- tracting Parties cannot use criteria in addi- tion to those set out in Article 25(1), 90. It is to be noted that the term 'owner of inasmuch as reliance on additional criteria a protected industrial design' is not defined could reduce the 'effective and adequate more precisely, so that it should logically be protection of intellectual property rights' regarded as referring to a person entitled to sought by TRIPs under the terms of its protection the conditions for which are laid preamble. down in Article 25(1). I consider that there are no grounds at all for inferring that use of the term 'owner' justifies the conclusion drawn by the Netherlands Government that only absolute rights in respect of industriai designs are protected, in other words rights vis-à-vis all parties founded on specific rules. 89. As regards the scope of the protection afforded to industrial designs, Article 26 of TRIPs provides: (i) that the owner of a protected industrial design is to have the right to prevent third parties not having the 91. Apart from the above terms and the 69 — On this subject, see D. Gervais, The TRIPs Agreement: conditions for protection of intellectual Drafting History and Analysis, London, Sweet & property rights in respect of industrial Maxwell, 1998, p. 140. 70 — See U. Suthersanen, Design Law in Europe, London, designs, the specific provisions of Art- Sweet & Maxwell, 2000, p. 437, where it is however icles 25 and 26 of TRIPs make no further noted that it is difficult to distinguish between an 'original' design and a design created 'independently'. reference concerning the method by which

92. As regards the protection of intellectual 71 — See the preamble to TRIPs where it is stated that the property rights in respect of industrial parties recognise 'the special needs of the least-developed country Members in respect of maximum flexibility in the designs, TRIPs does not appear to preclude domestic implementation of laws and regulations in order to enable them to create a sound and viable technological application of rules on unfair competition, base'. provided that the requirements under Art- 72 — Those paragraphs provide: ' 1 . Members shall ensure that enforcement procedures as specified in this Part are icles 25, 26 and 41 are met. Furthermore, available under their law so as to permit effective action Article 2(1) of TRIPs provides that 'in against any act of infringement of intellectual property rights covered by this Agreement, including expeditious respect of Parts II, III and IV of this remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These Agreement, Members shall comply with procedures shall be applied in such a manner as to avoid Articles 1 through 12, and Article 19, of the creation of barriers to legitimate trade and to provide for safeguards against their abuse. the Paris Convention (1967)'. Article 10 bis 2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not of that Convention regulates effective pro- be unnecessarily complicated or costly, or entail unreason- tection against unfair competition. able time-limits or unwarranted delays. 3. Decisions on the merits of a case shall preferably be in writing and reasoned. They shall be made available at least to the parties to the proceeding without undue delay. Decisions on the merits of a case shall be based only on 73 — At this point, it should be noted that the possibility of evidence in respect of which parties were offered the implementing the provisions of TRIPs by means of general opportunity to be heard. provisions relating to the protection of rights which are in 4. Parties to a proceeding shall have an opportunity for force under the law of the Contracting Parties does not review by a judicial authority of final administrative constitute an unduly broad interpretation of the agreement decisions and, subject to jurisdictional provisions in a liable to have a disproportionate effect on the legal system Member's law concerning the importance of a case, of at of each Contracting Party. Moreover, whether general or least the legal aspects of initial judicial decisions on the specific national rules are concerned, the corresponding merits of a case. However, there shall be no obligation to protection of intellectual property rights comes within the provide an opportunity for review of acquittals m criminal scope of TRIPs only in so far as the specific terms and cases.' conditions laid down by that agreement are met.

94. The precise assessment of the national legal system for the protection of the industrial design at issue in the main proceedings and the reply to the question 96. In any event, it should not be forgotten whether that national system in fact meets that, should the national court consider the requirements of TRIPs fall within the that specific questions concerning the inter- jurisdiction of the national court, which is pretation of TRIPs remain, it may submit a more conversant with national law and can further, more specific, question for a pre- decide whether that system falls within the liminary ruling, simultaneously providing scope of Articles 25, 26 and 41 of TRIPs as all the factual and legal details necessary defined above. for the Court to give a useful reply.

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V — Conclusion

97. In light of the above, I propose that the Court reply as follows:

(1) In Case C-300/98, the request for a preliminary ruling submitted by the Arrondissementsrechtbank 's-Gravenhage is inadmissible.