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of the proceedings. In the opinion of the I I I — The applicable Community legis- undertaking, the goods had originated in lation Italy and their final destination was to have been Poland.

7. The goods in question were detained by the customs authorities pursuant to the Anti-Piracy Regulation. 5. In July 2001, Tommy Hilfinger Licen- sing Inc. and Chemise Lacoste S.A. 4sought a similar investigation in relation to articles of clothing bearing their respective trade marks without their consent, and also the destruction of those articles of clothing. At the same time, and in relation to certain leather items and articles of clothing des- tined for Slovakia, Guccio Gucci SpA and The Gap Inc. sought to institute prelimi- 8. The Anti-Piracy Regulation is intended nary judicial investigations against the to prevent counterfeit and pirated goods suspected perpetrators of infringements of from being placed on the market through their trade mark rights, namely the director the adoption of measures to deal effectively or proprietor of a company whose regis- with unlawful trade in such goods (second tered office is in Beijing, China, and the recital in the preamble). proprietor of an undertaking based in Bratislava, Slovakia. In both cases, the claimants in the main proceedings claimed that the goods in question had come from China and were intended for import into Slovakia. As in the abovementioned cases, they sought the confiscation of the articles and their subsequent destruction. To that end, the regulation lays down the conditions under which the customs auth- orities may take action where goods sus- pected of being counterfeit or pirated are entered for free circulation, export or re- export, or where they are found when checks are made on goods placed under a suspensive procedure (Article 1(1)(a)), and, 6. All the alleged imitations were detained moreover, the measures which must be at the Kittsee customs office. taken by the competent authorities with regard to those goods where it has been established that they are indeed counterfeit 4 — On 8 March 2003, the referring court reported that Chemise Lacoste S.A. had discontinued its action. or pirated (Article 1(1)(b)).

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('the Customs Code') 5states that where the IV — The applicable Austrian legislation term '[suspensive] procedure' is used, it is understood as applying, in the context of non-Community goods, inter alia, to exter- nal transit.

16. Paragraph 60(1) and (2) of the Mar- kenschutzgesetz (Law on the protection of trade marks; 'the MSchG') 6provides that it is an offence for anyone to infringe a trade mark right in the course of trade, and, more 15. According to Article 91(1) of the Cus- particularly, in the course of their profes- toms Code: 'The external transit procedure sion (subparagraph 1), and also for anyone shall allow the movement from one point to use, without authorisation, the name, to another within the customs territory of business name or special designation of an the Community of: undertaking, or a distinguishing sign res- embling those designations, to identify goods or services pursuant to Paragraph 10a in such a way that it creates confusion in the course of trade (subparagraph 2).

(a) non-Community goods, without such goods being subject to import duties and other charges or to commercial policy measures;

17. Under Paragraph 10a of the MSchG, the use of a mark to identify goods and services is defined, in particular, as: (1) the use of a mark on goods, or on their packaging, or on objects in respect of which the service is carried out; (2) offer- ing, marketing, or holding goods identified (b) Community goods which are subject to by the mark for those purposes, or offering a Community measure involving their or supplying services under the mark; (3) export to third countries and in respect importing or exporting goods bearing the of which the corresponding customs mark; and (4) using the mark on commer- formalities for export have been carried cial documents, announcements or adver- out.' tising.

'Is a provision of national law, in casu Paragraph 60(1) and (2) of the Marken- A — jurisdiction of the Court schutzgesetz, in conjunction with Para- graph 10a thereof, which may be inter- preted as meaning that the mere transit of goods manufactured/distributed in contra- vention of provisions of the law on trade- 20. The claimant undertakings, who are marks is not punishable under criminal seeking the confiscation of goods in the law, contrary to Article 2 of Council main proceedings, oppose the reference of Regulation (EC) No 3 2 9 5 / 9 4 of the question for a preliminary ruling and 22 December 1994 laying down measures point out that a national court may refer a to prohibit the release for free circulation, question to the Court only if there is a case export, re-export or entry for a suspensive pending before it and it is called upon to procedure of counterfeit and pirated goods, give judgment in proceedings intended to as amended by Council Regulation (EC) lead to a decision of a judicial nature. 8 No 241/1999 of 25 January 1999?'

The claimants argue that the preliminary investigations carried out by the referring court do not fall into that category, since the referring court's sole function is to VI — Procedure before the Court clarify the facts with a view either to discontinuing the criminal action or to bringing formal charges and compiling evidence in the main proceedings. 19. The representatives of Monties Rolex S.A., Guccio Gucci SpA and The Gap Inc., 8 — Order of the Court of 18 June 1980 in Case 138/80 Barker [1980] ECR 1975, paragraph 4; Order of the Court of 5 March 1986 in Case 318/85 Greis Unterweger [1986] 7 — As it is worded in the corrigendum which the national court ECR 955, paragraph 4; and judgment in Case C-111/94 job sent on 4 March 2002. Centre [1995] ECR I-3661, paragraph 9.

On the contrary, it is clear from the claims 22. In Pretore di Salò, 9the Court held made by the claimants in the main proceed- admissible a reference which arose in the ings, and from the order for reference, that context of a preliminary investigation in the Landesgericht is required to adopt a criminal proceedings. The investigation decision on whether it is appropriate to could have resulted in an order that no bring an action which, in addition to further action be taken, in a summons to possible criminal penalties, could also lead appear, or in an acquittal, but it could not, to the confiscation and destruction of the under any circumstances, create an irre- detained goods. For that reason, the pro- versible procedural situation and nor did it ceedings are judicial proceedings in the constitute, for the purposes of national law, strict sense. a judicial act subject to the fundamental safeguards. 10 In Pardini, 11 the Court replied to questions referred in interlocu- tory proceedings in which the interim measure in question could be confirmed, varied or revoked. 23. Furthermore, it is settled case-law that, while it may be helpful for the facts of the case to have been established and for questions of purely national law to be settled at the time the reference is made to the Court, it is for the national court alone to decide at what stage in the proceedings it is appropriate to make reference. 14 There are numerous precedents where the Court has given rulings in cases brought against persons unknown. 12 The Court has held questions inadmissible in such cases only where they were referred by a repre- sentative of the Public Prosecutor's Office 24. In short, it is my opinion that the Court who was acting as a party to the proceed- has jurisdiction to give a ruling on the question referred by the Landesgericht Eisenstadt. 9 — Case 14/86 [1987] ECR 2545. See in particular paragraph 7 of the judgment, in which the Court followed the recom- mendations of Advocate General Mancini. 10 — See the observations of the Italian Government in the 13 — See Joined Cases C-74/95 and C-129/995 X, cited in the Report for the Hearing. previous footnote. 14 — Judgments in Joined Cases 36/80 and 71/80 Irish 11 — Case 338/85 [1988] ECR 2041. Creamery [1981] ECR 735, paragraphs 5 to 8; Case 72/83 12 — See the judgments in Case 110/76 Pretore di Cento [1977] Campus Oil [1984] ECR 2727, paragraph 10; Case ECR 851; Case 228/87 Pretura unificata di Torino [1988] C-66/96 Høj Pedersen [1998] ECR I-7327, paragraphs ECR 5099; Case C-373/90 X [1992] ECR I-131; and 45 and 46; and Case C-236/98 JämO [2000] ECR I-2189, Joined Cases C-74/95 and C-129/95 X [1996] ECR I-6609. paragraphs 30 and 31.

26. However, from the wording of the question and the nature of the explanations set out in the order for reference and the observations of the claimants in the main proceedings, it can be assumed that the 30. As I stated in my Opinion in the Polo/ goods were required to undergo the exter- Lauren case, 15 it is clear that the wording nal transit procedure. of the regulation covers circumstances such as those in point in this case. The title, the third recital and Article 1(1)(a) proclaim the intention to regulate the intervention of the customs authorities when goods sus- pected of being counterfeit or pirated are entered for free circulation, export or re- export or found when checks are made on goods placed tinder a suspensive procedure. According to Article 84( 1 ) of the Customs 27. As concerns the substance of the case, Code, '[suspensive] procedure' is a tech- the referring court asks whether the Anti- nical term used as a generic designation for Piracy Regulation precludes a national provision which 'may be interpreted' as meaning that the mere transit of counterfeit 1 5 — C a s e C-383/98 [2000] ECR I-2519 (the Polo/Lauren goods is not punishable under criminal law. case').

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the procedures of 'customs warehousing', 32. From a literal interpretation of the 'inward processing in the form of a system Anti-Piracy Regulation it follows, without of suspension', 'processing under customs any room for reasonable doubt, that its control', 'temporary importation' and 'ex- provisions are applicable when goods sus- ternal transit'. pected of infringing a trade mark are in Community external transit from one non- Member country to another.

34. Nor can there be any doubt as to the validity of the Anti-Piracy Regulation. The Community is empowered, under Article 133 EC (Article 113 of the Treaty when the regulation was adopted), to introduce common rules for monitoring counterfeit goods under a suspensive cus- toms procedure such as the external transit procedure. Under Article 133 EC, the 31. Moreover, according to the Anti-Piracy Community has jurisdiction to lay down Regulation, 'counterfeit goods' means all uniform principles applicable to the move- goods which, in various ways, result in the ment from one point to another within the infringement of 'the rights of the holder of customs territory of the Community of the trade mark in question under Commu- nity law or the law of the Member State in which the application for action by the 16 — Cited in footnote 3 of this Opinion. c u s t o m s a u t h o r i t i e s is m a d e ' 17 — Council Regulation (EEC) No 3842/86 of 1 December 1986 laying down measures to prohibit the release for free (Article 1(2)(a)). circulation of counterfeit goods (OJ 1986 L 3J7, p. 1).

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non-Community goods and goods intended ing under a suspensive procedure of for export, in respect of which the cor- counterfeit or pirated goods. responding formalities for export have been carried out, and, in the course of such movement, to have the customs authorities detain goods suspected of being counterfeit or pirated. 38. It is clear from the above that, where a Member State does not have in place legislation capable of penalising the types of conduct referred to in Article 11, it will be faced not only with the matter of whether it has complied with Community law but also with the possibility of a complaint that it has failed to fulfil an obligation, which must be dealt with under 35. The Court confirmed that view in its the procedure outlined in Articles 226 EC judgment in the Polo/Lauren case. 18 and 227 EC.

42. For its part, the Austrian Government submits that the list set out in Paragraph 10a of the MSchG is merely illustrative in nature. That is how the Austrian Govern- ment considers the expression 'in particu- lar' (insbesondere) 22 must be understood. It therefore follows, in the opinion of the Austrian Government, that Paragraph 10a does not preclude a finding by the national court, under Article 2 of the Anti-Piracy Regulation, that the transit of counterfeit goods amounts to use of the trade mark.

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44. Although it is for national courts alone 46. The fact that a State has not defined to interpret provisions of national law, it is conduct which, under Community law, important to note that, in accordance with ought to be considered unlawful could at settled case-law, those courts must do so, the most give rise to an assumption that the within the limits prescribed by their legal State has failed to fulfil its obligations, in systems, in the light of the wording and the respect of which an action could be purpose of the Community measure in brought by the Commission or another order to achieve the result pursued by the Member State under Articles 226 EC or latter. 24 227 EC, but it does not allow citizens of that State to be prosecuted for acts which, though unlawful under Community rules, are not punishable under national law.

45. However, the Court has also held that that obligation on the national court to refer to the content of a directive when 47. Finally, it only remains to be said that, interpreting the relevant rules of its although the case-law which has been cited national law is limited by the general arose in the context of directives, it applies principles of law which form part of the equally to rules which, like Article 11 of the Community legal system and in particular Anti-Piracy Regulation, impose on Member the principles of legal certainty and non- States an obligation to achieve a particular retroactivity. A directive cannot, of itself result. and independently of a national law adopted by a Member State for its imple- mentation, have the effect of determining or aggravating the liability in criminal law of persons who act in contravention of the provisions of that directive. 25

(2) The national court must interpret the provisions of national law, within the limits prescribed by its legal system, in the light of the wording and the purpose of the Community measure in order to achieve the result pursued by the latter.

(3) That duty to interpret national law consistently with the Community measure cannot, of itself and independently of a law adopted by a Member State, have the effect of determining or aggravating the liability in criminal law of persons who act in contravention of that measure.

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