| TRADE MARK — Infringement — Prohibitory order — “Special reasons” for not issuing order — Limited likelihood of further infringement — Powers under national law to penalise future infringement — Whether constituting special reasons — National court’s duties — Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L11, p 1), art 98(1)
Nokia Corp v Wärdell (Case C-316/05)
ECJ (First Chamber) (Jann (President of Chamber), Judges Lenaerts, Juhász, Schiemann and Ilešič (Rappporteur); Advocate General Sharpston): Judgment 14 December 2006
The defendant imported into Sweden a quantity of “flash stickers” for attaching to mobile telephones, a number of which bore the name “Nokia” which had been registered by the claimant as a Community trade mark for inter alia mobile telephones and their accessories. In the claimant’s action against the defendant for trade mark infringement, the defendant maintained that the offending consignment had been delivered by the supplier without his knowledge. It was held by the Swedish court that the defendant had committed an act of infringement and there was some risk that he might commit the same infringement in the future, but that since he had never committed such acts before and could only be accused of carelessness, the court would exercise the discretion that it had under national law not to impose a prohibition with a fine attached. On the claimant’s appeal, the Högsta domstolen (Supreme Court) referred to the ECJ for a preliminary ruling questions on the meaning of “special reasons” for not making a prohibitory order, in art 98(1) of Regulation No 40/94, and allied matters.
Art 98(1) provides: “Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.”
The Court of Justice ruled, in the operative part of its judgment:
Art 98(1) of Regulation No 40/94 is to be interpreted as meaning that: (1) the mere fact that the risk of further infringement or threatened infringement of a Community trade mark is not obvious or is otherwise merely limited does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts; (2) the fact that the national law includes a general prohibition of the infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence, does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts; (3) a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take such measures, in accordance with its national law, as are aimed at ensuring that that prohibition is complied with, even if the national law includes a general prohibition of infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence; (4) a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take, from among the measures provided for under national law, such as are aimed at ensuring that that prohibition is complied with, even if those measures could not, under that law, be taken in the case of a corresponding infringement of a national trade mark.
|
