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Monday, 30 November 2009

That Mystery Canon Case: more information

The IPKat continues to receive correspondence concerning Case C-181/09 Canon Kabushiki Kaisha v IPN Bulgaria OOD, a reference for a preliminary ruling on European trade mark law from the Sofiyski gradski sad (Bulgaria) which the Court of Justice of the European Communities (Fifth Chamber) declared to be "manifestly inadmissible". Since the Court's Order was only in French and Bulgarian, the IPKat summoned the help of his readers. He has now received more than 40 responses, a new record.


The IPKat's good friend Ventsi Stoilov has produced an entire English translation (here). For those who don't have time to read it, Simon Roberts offers a succinct explanation:
"This action concerns goods being exported from Bulgaria to Serbia. The Bulgarian Court wanted to know whether Art5.3(c) of the trade mark directive, which concerns the export or import of articles bearing "the mark", applies only to goods coming from the rightholder -- or does it apply to any goods bearing the mark?
The manifest inadmissibility seems to have arisen because the Bulgarian Court referred only the question, with no explanation of why they needed the question answered and with no explanation of the facts of the case. Such a referral is inadmissible at least in part, because other states are not then able effectively to comment on the referred question".
The IPKat's fellow Class 46 blogger Edith Van den Eede explains the mechanism of references for prelimary rulings:
"The ruling refers inter alia to the teaching of Telemarsicabruzzo and Others (1993, C-320/90, par. 6), stating that the need to provide an interpretation of Community law which will be of use to the national court makes it necessary that the referring court should define at the very least, explain the factual circumstances on which those questions are based.

The Court also stresses that it is important for the referring court to set out the precise reasons why it was unsure as to the interpretation of Community law and why it considered it necessary to refer questions to the Court for a preliminary ruling. It is essential that the national court should give at the very least some explanation of the reasons for the choice of the Community provisions which it requires to be interpreted and on the link it establishes between those provisions and the national legislation applicable to the dispute.

Therefore, the order for reference must be sufficiently complete and must contain all the relevant information not only to allow the Court to answer but also to permit the governments of the Member States and other parties entitled to submit observations in accordance with article 20 ECJ’s Statute ...".
Emil Markov adds an Bulgarian perspective:
"Sofia City Court just sent the judges'' entire file to Luxembourg and added a reference containing the question only. You've learned already about the lack of factual briefing and the missing legal context or reasoning for the question, and of the lack of any connection to the applicable national law. ...

Even so ..., the question is not entirely dull. Somehow it goes beyond Silhouette etc. Said Gulmann, J. then: 'Art. 7(1) of Directive 89/104 cannot be interpreted as meaning that the proprietor of a trade mark is entitled, on the basis of that provision alone, to obtain an order restraining a third party from using his trade mark for products which have been put on the market outside the European Economic Area under that mark by the proprietor or with his consent.' Now the new question might be interpreted as follows: Can this proprietor restrain a third party from importing products which have been put on the market outside the EEA under that mark by the proprietor or with his consent according to Art. 5(3)(c) of Directive 89/104? Does Art. 5 (3)(c) prohibit import of goods under a sign identical or similar (...etc.) to this mark only (under counterfeiting signs only)?".
The IPKat once again thanks everyone who has written to him. He says, it has been a pleasure to learn from you all.

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