Keywords
Summary

Keywords

1. Procedure — Introduction of new pleas in law in the course of the proceedings — Conditions — New plea — Definition — (Rules of Procedure of the Court of First Instance, Art. 48(2))

2. Actions for damages — Distinct nature — Exhaustion of domestic remedies — Exception — Impossibility of obtaining satisfaction before national courts — Infringement of a registered trade mark — (Arts 235 EC and 288, second para., EC)

3. Approximation of laws — Trade marks — Directive 89/104 — Right of the owner of a registered trade mark to contest its unlawful use — Sign identical or similar to the trade mark — Use in the course of trade — Definition — Use of the official euro symbol to designate the single currency — Not included — (Council Directive 89/104, Art. 5(1)(b))

4. Approximation of laws — Trade marks — Directive 89/104 — Right of the owner of a registered trade mark to contest its unlawful use — Likelihood of confusion — Assessment — Likelihood of association — Insufficient — (Council Directive 89/104, Art. 5(1)(b))

5. Non-contractual liability — Conditions — Lawful act — Real damage, causal link and unusual and special damage — Cumulative nature — (Art. 288, second para., EC)

Summary

1. The first subparagraph of Article 48(2) of the Rules of Procedure of the Court of First Instance provides that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure. A plea which amplifies a submission put forward previously, whether directly or by implication, and which is closely connected with that submission, will be declared admissible.

see paras 33-34

2. The action for damages under Article 235 EC and the second paragraph of Article 288 EC was established as an autonomous form of action with a particular purpose to fulfil within the system of actions, and its exercise is subject to conditions imposed in view of its specific objective. Although an action for damages must be appraised with regard to the entire system for the judicial protection of the individual and although its admissibility may thus, in some cases, be subject to the prior exhaustion of national remedies, it is none the less a necessary precondition that those national remedies give effective protection to the individuals concerned who are aggrieved by measures of Community institutions and that they are capable of leading to compensation for the damage alleged.

That is not so in the case of a finding, by a national court in a Member State in which a figurative sign has been registered as a trade mark, of an infringement of that sign by a Community institution. Such a finding could not give rise to an order to compensate the damage allegedly caused to the proprietor of the trade mark since the combined provisions of Articles 235 and 288 EC give the Community Courts exclusive jurisdiction to hear actions seeking compensation for damage attributable to the Community, which is bound, under the second paragraph of Article 288 EC, to make good, in accordance with the general principles common to the laws of the Member States, any damage caused by its institutions or by its servants in the performance of their duties.

see paras 87-89

3. The use of a sign identical to a trade mark is indeed use in the course of trade within the meaning of Article 5(1)(b) of the First Trade Mark Directive 89/104 where it takes place in the context of commercial activity with a view to economic advantage. The purpose of the protection afforded by the trade mark is, in particular, to guarantee its function as an indication of origin. The essential function of the trade mark is to guarantee the identity of the origin of the marked product or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another trade origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality.

The official euro symbol is not a sign affixed to products or services to distinguish them from other products and services thereby enabling the general public to identify their origin, but is instead intended to denote a currency unit and is generally preceded or followed by a number. Its use to designate the single currency does not therefore amount to use of a sign corresponding to a trade mark in the course of trade within the meaning of Article 5(1)(b) of that directive.

see paras 93-96

4. Article 5(1)(b) of the First Trade Mark Directive 89/104 applies only where, because of the identity, or similarity both of the sign and the trade mark and of the designated goods or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. The concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope, with the result that a likelihood of association alone does not suffice to show that the required likelihood of confusion exists.

see paras 123-125

5. If the principle of no-fault liability were recognised in Community law, a precondition for such liability would in any event be the cumulative satisfaction of three conditions, namely the reality of the damage allegedly suffered, the causal link between it and the act on the part of the Community institutions, and the special and unusual nature of that damage.

As regards the existence of actual and certain damage, it is incumbent upon the applicant to produce to the Community Courts the evidence to establish the fact of the loss which it claims to have suffered. The existence of actual and certain damage cannot be considered in the abstract by the Community Courts but must be assessed in relation to the specific facts characterising each particular case.

Moreover, there is a causal link for the purposes of the second paragraph of Article 288 EC where there is a direct link of cause and effect between the relevant action of the institution concerned and the injury pleaded, the burden of proof being on the applicant. The Community can be held liable only for damage which is a sufficiently direct consequence of the conduct of the institution concerned.

see paras 161-163