{"attribution":{"source":"legal.exploreworldai.com","canonical":"https://legal.exploreworldai.com/api/public/v1/judgment-text?id=eu:c-245-02","cite_as":"NovaCopilot, legal.exploreworldai.com (https://legal.exploreworldai.com/api/public/v1/judgment-text?id=eu:c-245-02)","license":"https://legal.exploreworldai.com/revision","version":"legal-2026-10-13","fingerprint":"ewai:eu:a03983","proof":"sha256:cbb7a477a618f0a0857d9824b147d5daad4989c296579723935bf76b5aa2b618","jurisdiction":"eu","lang":"en","publisher":"NovaCopilot by ExploreWorld Legal","terms":"https://legal.exploreworldai.com/om"},"brand_source":"Source: NovaCopilot","item":{"schema_version":"1.0.0","id":"eu:c-245-02","jurisdiction":"eu","lang":"en","brand_source":"Source: NovaCopilot","brand":{"product":"NovaCopilot","platform":"ExploreWorldAI","infrastructure":"ExploreWorld Legal","infrastructure_url":"legal.exploreworldai.com","legal_entity":"Valkiv Ventures AB","permanent_url":"https://legal.exploreworldai.com/novacopilot","source":"Source: NovaCopilot","powered_by":"Powered by NovaCopilot","license":"https://legal.exploreworldai.com/licensvillkor"},"sections":[{"title":"Arrêt de la Cour","paragraphs":[]},{"title":"Case C-245/02","paragraphs":["para_3","para_4"]},{"title":"Budĕjovický Budvar, národní podnik","paragraphs":[]},{"title":"(Reference for a preliminary ruling from the Korkein oikeus)","paragraphs":["para_7"]},{"title":"Summary of the judgment","paragraphs":["para_9"]},{"title":"(Art. 234 EC; TRIPs Agreement)","paragraphs":["para_11"]},{"title":"(TRIPs Agreement, Art. 70(1))","paragraphs":["para_13"]},{"title":"(TRIPs Agreement; Council Directive 89/104)","paragraphs":["para_15"]},{"title":"(TRIPs Agreement, Arts 16(1) and 17)","paragraphs":["para_17"]},{"title":"(TRIPs Agreement, Art. 16(1))","paragraphs":["para_19","para_20"]},{"title":"(see paras 41-42)","paragraphs":["para_22","para_23"]},{"title":"(see paras 49, 53, operative part 1)","paragraphs":["para_25","para_26"]},{"title":"(see paras 54-55, 57)","paragraphs":["para_28","para_29"]},{"title":"(see para. 85, operative part 2)","paragraphs":["para_31","para_32"]},{"title":"(see paras 89, 100, operative part 3)","paragraphs":[]},{"title":"JUDGMENT OF THE COURT (Grand Chamber)\n16 November 2004 (1)","paragraphs":["para_35","para_36","para_37","para_38","para_39","para_40","para_41","para_42","para_43","para_44","para_45","para_46","para_47","para_48","para_49"]},{"title":"Judgment","paragraphs":[]},{"title":"1","paragraphs":["para_52"]},{"title":"2","paragraphs":["para_54"]},{"title":"Legal background","paragraphs":[]},{"title":"International law","paragraphs":[]},{"title":"3","paragraphs":["para_58","para_59"]},{"title":"4","paragraphs":["para_61"]},{"title":"5","paragraphs":["para_63","para_64"]},{"title":"6","paragraphs":["para_66","para_67","para_68"]},{"title":"7","paragraphs":["para_70","para_71"]},{"title":"8","paragraphs":["para_73","para_74"]},{"title":"9","paragraphs":[]},{"title":"Under Article 17 of the TRIPs Agreement, which is headed ‘Exceptions’:","paragraphs":["para_77"]},{"title":"10","paragraphs":["para_79","para_80","para_81","para_82","para_83","para_84"]},{"title":"Community law","paragraphs":[]},{"title":"11","paragraphs":["para_87"]},{"title":"12","paragraphs":["para_89"]},{"title":"13","paragraphs":["para_91","para_92","para_93","para_94","para_95"]},{"title":"(3) The following, inter alia, may be prohibited under paragraphs l and 2:","paragraphs":[]},{"title":"(a)\n affixing the sign to the goods or to the packaging thereof;","paragraphs":["para_98","para_99"]},{"title":"14","paragraphs":["para_101","para_102"]},{"title":"(a)\n his own name or address;","paragraphs":["para_104","para_105"]},{"title":"National law","paragraphs":[]},{"title":"Trade-mark law","paragraphs":[]},{"title":"15","paragraphs":["para_109","para_110"]},{"title":"16","paragraphs":[]},{"title":"The first subparagraph of Paragraph 4 of the Tavaramerkkilaki provides:","paragraphs":["para_113"]},{"title":"17","paragraphs":[]},{"title":"The first subparagraph of Paragraph 6 of the Tavaramerkkilaki provides:","paragraphs":["para_116"]},{"title":"18","paragraphs":["para_118"]},{"title":"19","paragraphs":["para_120"]},{"title":"20","paragraphs":["para_122"]},{"title":"The right to trade names","paragraphs":[]},{"title":"21","paragraphs":["para_125"]},{"title":"22","paragraphs":[]},{"title":"Paragraph 2(3) of the Toiminimilaki provides:","paragraphs":["para_128"]},{"title":"23","paragraphs":["para_130"]},{"title":"The main action and the questions referred for a preliminary ruling","paragraphs":[]},{"title":"24","paragraphs":["para_133"]},{"title":"25","paragraphs":["para_135"]},{"title":"26","paragraphs":["para_137"]},{"title":"27","paragraphs":["para_139"]},{"title":"28","paragraphs":["para_141"]},{"title":"29","paragraphs":["para_143"]},{"title":"30","paragraphs":["para_145"]},{"title":"31","paragraphs":["para_147"]},{"title":"32","paragraphs":["para_149"]},{"title":"33","paragraphs":["para_151"]},{"title":"34","paragraphs":["para_153"]},{"title":"35","paragraphs":["para_155"]},{"title":"36","paragraphs":["para_157"]},{"title":"37","paragraphs":["para_159"]},{"title":"38","paragraphs":["para_161"]},{"title":"39","paragraphs":["para_163","para_164"]},{"title":"2.\n If the answer to Question 1 is affirmative:","paragraphs":["para_166","para_167"]},{"title":"3.\n If the answer to Question 2(a) is affirmative:","paragraphs":["para_169","para_170","para_171","para_172","para_173"]},{"title":"The questions referred for a preliminary ruling","paragraphs":[]},{"title":"Admissibility of the reference for a preliminary ruling","paragraphs":[]},{"title":"40","paragraphs":["para_177"]},{"title":"41","paragraphs":["para_179"]},{"title":"42","paragraphs":["para_181"]},{"title":"43","paragraphs":["para_183"]},{"title":"44","paragraphs":["para_185"]},{"title":"45","paragraphs":["para_187"]},{"title":"46","paragraphs":["para_189"]},{"title":"The first question","paragraphs":[]},{"title":"47","paragraphs":["para_192"]},{"title":"48","paragraphs":["para_194"]},{"title":"49","paragraphs":["para_196"]},{"title":"50","paragraphs":["para_198"]},{"title":"51","paragraphs":["para_200"]},{"title":"52","paragraphs":["para_202"]},{"title":"53","paragraphs":["para_204"]},{"title":"The second and third questions","paragraphs":[]},{"title":"Preliminary observations","paragraphs":[]},{"title":"54","paragraphs":["para_208"]},{"title":"55","paragraphs":["para_210"]},{"title":"56","paragraphs":["para_212"]},{"title":"57","paragraphs":["para_214"]},{"title":"The second question","paragraphs":[]},{"title":"58","paragraphs":["para_217"]},{"title":"59","paragraphs":["para_219"]},{"title":"60","paragraphs":["para_221"]},{"title":"61","paragraphs":["para_223"]},{"title":"62","paragraphs":["para_225"]},{"title":"63","paragraphs":["para_227"]},{"title":"64","paragraphs":["para_229"]},{"title":"65","paragraphs":["para_231"]},{"title":"66","paragraphs":["para_233"]},{"title":"67","paragraphs":["para_235"]},{"title":"68","paragraphs":["para_237"]},{"title":"69","paragraphs":["para_239"]},{"title":"70","paragraphs":["para_241"]},{"title":"71","paragraphs":["para_243"]},{"title":"72","paragraphs":["para_245"]},{"title":"73","paragraphs":["para_247"]},{"title":"74","paragraphs":["para_249"]},{"title":"75","paragraphs":["para_251"]},{"title":"76","paragraphs":["para_253"]},{"title":"77","paragraphs":["para_255"]},{"title":"78","paragraphs":["para_257"]},{"title":"79","paragraphs":["para_259"]},{"title":"80","paragraphs":["para_261"]},{"title":"81","paragraphs":["para_263"]},{"title":"82","paragraphs":["para_265"]},{"title":"83","paragraphs":["para_267"]},{"title":"84","paragraphs":["para_269"]},{"title":"85","paragraphs":[]},{"title":"Accordingly, the second question must be answered as follows:","paragraphs":["para_272","para_273"]},{"title":"The third question","paragraphs":[]},{"title":"86","paragraphs":["para_276"]},{"title":"87","paragraphs":["para_278"]},{"title":"88","paragraphs":["para_280"]},{"title":"89","paragraphs":["para_282"]},{"title":"90","paragraphs":["para_284"]},{"title":"91","paragraphs":["para_286"]},{"title":"92","paragraphs":["para_288"]},{"title":"93","paragraphs":["para_290"]},{"title":"94","paragraphs":["para_292"]},{"title":"95","paragraphs":["para_294"]},{"title":"96","paragraphs":["para_296"]},{"title":"97","paragraphs":["para_298"]},{"title":"98","paragraphs":["para_300"]},{"title":"99","paragraphs":["para_302"]},{"title":"100","paragraphs":["para_304"]},{"title":"Costs","paragraphs":[]},{"title":"101","paragraphs":["para_307"]},{"title":"On those grounds, the Court (Grand Chamber) rules as follows:","paragraphs":["para_309","para_310","para_311","para_312","para_313"]},{"title":"1 –","paragraphs":["para_315"]}],"paragraphs":[{"text":"Arrêt de la Cour","paragraph_id":"para_1"},{"text":"Case C-245/02","paragraph_id":"para_2"},{"text":"Anheuser-Busch Inc.","paragraph_id":"para_3"},{"text":"v","paragraph_id":"para_4"},{"text":"Budĕjovický Budvar, národní podnik","paragraph_id":"para_5"},{"text":"(Reference for a preliminary ruling from the Korkein oikeus)","paragraph_id":"para_6"},{"text":"(Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name)","paragraph_id":"para_7"},{"text":"Summary of the judgment","paragraph_id":"para_8"},{"text":"1. Reference for a preliminary ruling – Jurisdiction of the Court – Interpretation of an international agreement concluded by\n the Community and the Member States under joint competence and having a bearing on the application by national courts of Community\n provisions – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)","paragraph_id":"para_9"},{"text":"(Art. 234 EC; TRIPs Agreement)","paragraph_id":"para_10"},{"text":"2. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Application ratione\n temporis – Application to a conflict between a trade mark and a sign arising before the date of application of that agreement\n and continuing after that date","paragraph_id":"para_11"},{"text":"(TRIPs Agreement, Art. 70(1))","paragraph_id":"para_12"},{"text":"3. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Direct effect – None\n – Obligations of the national courts – Trade mark law – Application of national law in the light of the wording and purpose\n of the relevant provisions of both Directive 89/104 and the TRIPs Agreement","paragraph_id":"para_13"},{"text":"(TRIPs Agreement; Council Directive 89/104)","paragraph_id":"para_14"},{"text":"4. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Trade mark law – Exclusive\n right of the proprietor of the trade mark to prevent a third party from using a sign – Exceptions – Sign which is identical\n or similar to the trade mark indicating a trade name – Condition – Use of the sign in accordance with honest practices in\n industrial or commercial matters","paragraph_id":"para_15"},{"text":"(TRIPs Agreement, Arts 16(1) and 17)","paragraph_id":"para_16"},{"text":"5. International agreements – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Trade mark law – Trade\n name in conflict with a trade mark – Trade name right which arose prior to the trade mark – Use of the trade name unable to\n be prohibited by the proprietor of the trade mark","paragraph_id":"para_17"},{"text":"(TRIPs Agreement, Art. 16(1))","paragraph_id":"para_18"},{"text":"1. Since the Community is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement),\n as set out in Annex 1C to the Agreement establishing the World Trade Organisation, it is under an obligation to interpret\n its trade-mark legislation, as far as possible, in the light of the wording and purpose of that agreement.","paragraph_id":"para_19"},{"text":"It follows that the Court has jurisdiction to interpret a provision of the TRIPs Agreement for the purpose of responding to\n the needs of the judicial authorities of the Member States where they are called upon to apply their national rules with a\n view to ordering measures for the protection of rights created by Community legislation which fall within the scope of that\n agreement.","paragraph_id":"para_20"},{"text":"(see paras 41-42)","paragraph_id":"para_21"},{"text":"2. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), as set out in Annex 1C to the Agreement\n establishing the World Trade Organisation, approved on behalf of the European Community, as regards matters within its competence,\n by Decision 94/800, applies in the …","paragraph_id":"para_22"},{"text":"In particular, the effect of Article 70(1) of that Agreement, which provides that the latter does not create obligations in\n respect of acts which occurred before its date of application for Members, is that the Agreement applies to situations which\n continue after that date.","paragraph_id":"para_23"},{"text":"(see paras 49, 53, operative part 1)","paragraph_id":"para_24"},{"text":"3. The provisions of the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs Agreement), as set out in Annex 1C\n to the Agreement establishing the World Trade Organisation, are not such as to create rights upon which individuals may rely\n directly before the courts by virtue of Community law.","paragraph_id":"para_25"},{"text":"However, when called upon to apply national rules with a view to ordering measures for the protection of rights in a field\n in which the TRIPs Agreement applies and in which the Community has already legislated, as is the case with the field of trade\n marks, the national courts are required under Co …","paragraph_id":"para_26"},{"text":"(see paras 54-55, 57)","paragraph_id":"para_27"},{"text":"4. A trade name may constitute a sign within the meaning of the first sentence of Article 16(1) of the Agreement on Trade-Related\n Aspects of Intellectual Property Rights (TRIPs Agreement), set out in Annex 1C to the Agreement establishing the World Trade\n Organisation. That provision is intended to …","paragraph_id":"para_28"},{"text":"The exceptions to the rights conferred by a trade mark provided for in Article 17 of the TRIPs Agreement are intended, inter\n alia, to enable a third party to use a sign identical or similar to a trade mark to indicate his trade name, provided that\n such use is in accordance with honest practices in industrial or commercial matters.","paragraph_id":"para_29"},{"text":"(see para. 85, operative part 2)","paragraph_id":"para_30"},{"text":"5. A trade name, which is not registered or established by use in the Member State where the mark with which it is alleged to\n conflict is registered and in which protection against the trade name in question is sought may be regarded as an existing\n prior right within the meaning of the third sente …","paragraph_id":"para_31"},{"text":"It follows that the use of that trade name cannot be prohibited by virtue of the exclusive right conferred by the trade mark\n on its proprietor under the first sentence of Article 16(1) of the said Agreement.","paragraph_id":"para_32"},{"text":"(see paras 89, 100, operative part 3)","paragraph_id":"para_33"},{"text":"JUDGMENT OF THE COURT (Grand Chamber)\n16 November 2004 (1)","paragraph_id":"para_34"},{"text":"(Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor's exclusive right to the trade mark – Alleged use of the sign as a trade name)","paragraph_id":"para_35"},{"text":"In Case C-245/02,REFERENCE for a preliminary ruling under Article 234 EC from the Korkein oikeus (Finland), made by decision of 3 July 2002, received at the Court on 5 July 2002, in the proceedings","paragraph_id":"para_36"},{"text":"Anheuser-Busch Inc.","paragraph_id":"para_37"},{"text":"v","paragraph_id":"para_38"},{"text":"Budĕjovický Budvar, národní podnik ,","paragraph_id":"para_39"},{"text":"THE COURT (Grand Chamber),,","paragraph_id":"para_40"},{"text":"composed of: V. Skouris, President, P. Jann, C.W.A. Timmermans (Rapporteur), A. Rosas and R. Silva de Lapuerta (Presidents\n of Chambers), C. Gulmann, R. Schintgen, N. Colneric, S. von Bahr, J.N. Cunha Rodrigues and K. Schiemann, Judges,","paragraph_id":"para_41"},{"text":"Advocate General: A. Tizzano,\nRegistrar: M. Múgica Arzamendi, Principal Administrator,","paragraph_id":"para_42"},{"text":"having regard to the written procedure and further to the hearing on 27 April 2004,after considering the observations submitted on behalf of:","paragraph_id":"para_43"},{"text":"–\n Anheuser-Busch Inc., by R. Hilli, asianajaja, and D. Ohlgart and B. Goebel, Rechtsanwälte,","paragraph_id":"para_44"},{"text":"–\n Budĕjovický Budvar, národní podnik, by P. Backström and P. Eskola, asianajajat,","paragraph_id":"para_45"},{"text":"–\n the Finnish Government, by T. Pynnä, acting as Agent,","paragraph_id":"para_46"},{"text":"–\n the Commission of the European Communities, by E. Paasivirta and R. Raith, acting as Agents,","paragraph_id":"para_47"},{"text":"after hearing the Opinion of the Advocate General at the sitting on 29 June 2004,","paragraph_id":"para_48"},{"text":"gives the following","paragraph_id":"para_49"},{"text":"Judgment","paragraph_id":"para_50"},{"text":"1","paragraph_id":"para_51"},{"text":"The question referred for a preliminary ruling concerns the interpretation of Articles 2(1), 16(1) and 70 of the Agreement\n on Trade-Related Aspects of Intellectual Property Rights (‘the TRIPs Agreement’), as set out in Annex 1 C to the Agreement\n establishing the World Trade Organisation (‘the WTO Agreement’), approved on behalf of the Community, as regards matters within\n its competence, by Council Decision 94/800/EC of 22 December 1994 (OJ 1994 L 336, p. 1, at p. 214).","paragraph_id":"para_52"},{"text":"2","paragraph_id":"para_53"},{"text":"The reference has been made in the proceedings between the breweries Anheuser-Busch, Inc. (‘Anheuser-Busch’), established\n in Saint Louis, Missouri (United States), and Budĕjovický Budvar, národní podnik (‘Budvar’), established in Česke Budějovice\n (Czech Republic), concerning the labelling used by …","paragraph_id":"para_54"},{"text":"Legal background","paragraph_id":"para_55"},{"text":"International law","paragraph_id":"para_56"},{"text":"3","paragraph_id":"para_57"},{"text":"Article 8 of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as last revised at Stockholm\n on 14 July 1967, ( United Nations Treaty Series , Vol. 828, No 11847, p. 108, ‘the Paris Convention’) provides:","paragraph_id":"para_58"},{"text":"‘A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether\n or not it forms part of a trade mark.’","paragraph_id":"para_59"},{"text":"4","paragraph_id":"para_60"},{"text":"The WTO Agreement, and the TRIPs Agreement which forms an integral part of it, entered into force on 1 January 1995. However,\n according to Article 65(1) of the TRIPs Agreement, the members were not obliged to apply the provisions of that agreement\n before the expiry of a general period of one year, that is to say, before 1 January 1996 (‘the date of application’).","paragraph_id":"para_61"},{"text":"5","paragraph_id":"para_62"},{"text":"Article 1 of the TRIPs Agreement, which is entitled ‘Nature and Scope of Obligations’, provides in paragraph 2:","paragraph_id":"para_63"},{"text":"‘For the purposes of this agreement, the term “intellectual property” refers to all categories of intellectual property that\n are the subject of Sections 1 through 7 of Part II.’","paragraph_id":"para_64"},{"text":"6","paragraph_id":"para_65"},{"text":"Article 2 of the TRIPs Agreement, which is headed ‘Intellectual Property Conventions’, provides:","paragraph_id":"para_66"},{"text":"‘1. In respect of Parts II, III and IV of this agreement, Members shall comply with Articles 1 through 12, and Article 19, of\n the Paris Convention (1967).","paragraph_id":"para_67"},{"text":"2. Nothing in Parts I to IV of this agreement shall derogate from existing obligations that Members may have to each other under\n the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated\n Circuits.’","paragraph_id":"para_68"},{"text":"7","paragraph_id":"para_69"},{"text":"Article 15 of the TRIPs Agreement, which is headed ‘Protectable Subject-matter’ and is to be found in Section 2 of Part II\n of that agreement, which deals with standards concerning the availability, scope and use of intellectual property rights,\n provides in paragraph 1:","paragraph_id":"para_70"},{"text":"‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other\n undertakings, shall be capable of constituting a trade mark. Such signs, in particular words including personal names, letters,\n numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for\n registration as trade marks. …’","paragraph_id":"para_71"},{"text":"8","paragraph_id":"para_72"},{"text":"Article 16 of the TRIPs Agreement, which is headed ‘Rights Conferred’, provides in paragraph 1:","paragraph_id":"para_73"},{"text":"‘The owner of a registered trade mark shall have the exclusive right to prevent all third parties not having the owner’s consent\n from using in the course of trade identical or similar signs for goods or services which are identical or similar to those\n in respect of which the trade mark is register …","paragraph_id":"para_74"},{"text":"9","paragraph_id":"para_75"},{"text":"Under Article 17 of the TRIPs Agreement, which is headed ‘Exceptions’:","paragraph_id":"para_76"},{"text":"‘Members may provide limited exceptions to the rights conferred by a trade mark, such as fair use of descriptive terms, provided\n that such exceptions take account of the legitimate interests of the owner of the trade mark and of third parties.’","paragraph_id":"para_77"},{"text":"10","paragraph_id":"para_78"},{"text":"Article 70 of the TRIPs Agreement, which is headed ‘Protection of Existing Subject-matter’, provides:","paragraph_id":"para_79"},{"text":"‘1. This agreement does not give rise to obligations in respect of acts which occurred before the date of application of the Agreement\n for the Member in question.","paragraph_id":"para_80"},{"text":"2. Except as otherwise provided for in this agreement, this agreement gives rise to obligations in respect of all subject-matter\n existing at the date of application of this agreement for the Member in question, and which is protected in that Member on\n the said date, or which meets or comes subsequently to meet the criteria for protection under the terms of this agreement.\n …","paragraph_id":"para_81"},{"text":"…","paragraph_id":"para_82"},{"text":"4. In respect of any acts in respect of specific objects embodying protected subject-matter which become infringing under the\n terms of legislation in conformity with this agreement, and which were commenced, or in respect of which a significant investment\n was made, before the date of acceptance of …","paragraph_id":"para_83"},{"text":"…’","paragraph_id":"para_84"},{"text":"Community law","paragraph_id":"para_85"},{"text":"11","paragraph_id":"para_86"},{"text":"According to the first recital in the preamble thereto, the purpose of First Council Directive 89/104/EEC of 21 December 1988\n to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) is to approximate the laws of Member\n States in order to remove the existing disparities which may impede the free movement of goods and the freedom to provide\n services and may distort competition within the common market.","paragraph_id":"para_87"},{"text":"12","paragraph_id":"para_88"},{"text":"However, as is apparent from the third recital, Directive 89/104 is not intended to achieve full-scale approximation of the\n trade-mark laws of the Member States.","paragraph_id":"para_89"},{"text":"13","paragraph_id":"para_90"},{"text":"Article 5 of Directive 89/104, which is principally intended to define the scope of protection conferred by the right to a\n trade mark, provides in paragraphs 1, 2, 3 and 5:","paragraph_id":"para_91"},{"text":"‘(1)\n The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent\n all third parties not having his consent from using in the course of trade:","paragraph_id":"para_92"},{"text":"(a)\n any sign which is identical with the trade mark in relation to goods or services which are identical with those for which\n the trade mark is registered;","paragraph_id":"para_93"},{"text":"(b)\n any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods\n or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which\n includes the likelihood of association between the sign and the trade mark.","paragraph_id":"para_94"},{"text":"(2) Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent\n from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or\n services which are not similar to those for whic …","paragraph_id":"para_95"},{"text":"(3) The following, inter alia, may be prohibited under paragraphs l and 2:","paragraph_id":"para_96"},{"text":"(a)\n affixing the sign to the goods or to the packaging thereof;","paragraph_id":"para_97"},{"text":"…","paragraph_id":"para_98"},{"text":"(5) Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other\n than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage\n of, or is detrimental to, the distinctive character or the repute of the trade mark.’","paragraph_id":"para_99"},{"text":"14","paragraph_id":"para_100"},{"text":"Article 6 of Directive 89/104, which is headed ‘Limitation of the effects of a trade mark’, provides in paragraph 1:","paragraph_id":"para_101"},{"text":"‘1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,","paragraph_id":"para_102"},{"text":"(a)\n his own name or address;","paragraph_id":"para_103"},{"text":"…","paragraph_id":"para_104"},{"text":"provided he uses them in accordance with honest practices in industrial or commercial matters.’","paragraph_id":"para_105"},{"text":"National law","paragraph_id":"para_106"},{"text":"Trade-mark law","paragraph_id":"para_107"},{"text":"15","paragraph_id":"para_108"},{"text":"Under the first subparagraph of Paragraph 3 of the Tavaramerkkilaki (Law on trade marks) (7/1964) of 10 January 1964 (‘the\n Tavaramerkkilaki’):","paragraph_id":"para_109"},{"text":"‘Any person may use, in the course of his trade, his name, address or trade name as a trade symbol for his products unless\n use of that symbol might give rise to confusion with the protected trade mark of a third party or with a name, address or\n trade name lawfully used by a third party in his trading activities.’","paragraph_id":"para_110"},{"text":"16","paragraph_id":"para_111"},{"text":"The first subparagraph of Paragraph 4 of the Tavaramerkkilaki provides:","paragraph_id":"para_112"},{"text":"‘The right to use a sign for a product under Paragraphs 1 to 3 of this law means that no one other than its proprietor may\n use commercially as a sign for his products a sign liable to be confused therewith, on the product or its packaging, in advertising\n or business documents or otherwise, including also use by word of mouth. …’","paragraph_id":"para_113"},{"text":"17","paragraph_id":"para_114"},{"text":"The first subparagraph of Paragraph 6 of the Tavaramerkkilaki provides:","paragraph_id":"para_115"},{"text":"‘Signs are deemed to be liable to be confused with each other under this law only if they refer to identical or similar types\n of products.’","paragraph_id":"para_116"},{"text":"18","paragraph_id":"para_117"},{"text":"Under Paragraph 7 of the Tavaramerkkilaki, where more than one person claims to have an exclusive right to use on his products\n signs which are liable to be confused, priority is to be given to that person who is able to rely on an earlier legal basis,\n provided that the right claimed has not expired as a result of, for example, a lack of use by the proprietor.","paragraph_id":"para_118"},{"text":"19","paragraph_id":"para_119"},{"text":"Under point 6 of the first subparagraph of Paragraph 14 of the Tavaramerkkilaki, marks liable to be confused with the protected\n trade name, secondary sign or trade mark of another economic operator may not be registered.","paragraph_id":"para_120"},{"text":"20","paragraph_id":"para_121"},{"text":"The national court points out that the Finnish legislature took the view that the Tavaramerkkilaki is consistent with the\n TRIPs Agreement and that there was therefore no need to amend it to bring into line with that agreement. Similarly, the Finnish\n legislature considered the provisions of the Tavaramerkkilaki on the likelihood of confusion between marks designating identical\n or similar goods to be compatible with Directive 89/104, so that they could remain unchanged.","paragraph_id":"para_122"},{"text":"The right to trade names","paragraph_id":"para_123"},{"text":"21","paragraph_id":"para_124"},{"text":"Under Paragraph 2(1) of the Toiminimilaki (Law on trade names) (128/1979) of 2 February 1979 (‘the Toiminimilaki’), the exclusive\n right to use a trade name is acquired either by registering that name or by establishing it through use.","paragraph_id":"para_125"},{"text":"22","paragraph_id":"para_126"},{"text":"Paragraph 2(3) of the Toiminimilaki provides:","paragraph_id":"para_127"},{"text":"‘A trade name is regarded as having been established by use where it is generally well known by the public targeted by the\n activity of the economic operator.’","paragraph_id":"para_128"},{"text":"23","paragraph_id":"para_129"},{"text":"The national court points out that, in its decisions, it has interpreted Article 8 of the Paris Convention as protecting,\n in addition to trade names registered in Finland or established by use there, foreign trade names which have been registered\n in another contracting State to that convention and …","paragraph_id":"para_130"},{"text":"The main action and the questions referred for a preliminary ruling","paragraph_id":"para_131"},{"text":"24","paragraph_id":"para_132"},{"text":"Anheuser-Busch is the proprietor in Finland of the trade marks Budweiser, Bud, Bud Light and Budweiser King of Beers, which\n designate beer and were registered between 5 June 1985 and 5 August 1992. The first application for registration of those\n marks, that for Budweiser, was filed on 24 October 1980.","paragraph_id":"para_133"},{"text":"25","paragraph_id":"para_134"},{"text":"Budvar registered its trade name in the Czechoslovakian commercial register on 1 February 1967. It was registered in Czech\n (‘Budĕjovický Budvar, národní podnik’), English (‘Budweiser Budvar, National Corporation’) and French (‘Budweiser Budvar,\n Entreprise nationale’). Budvar was, moreover, the pro …","paragraph_id":"para_135"},{"text":"26","paragraph_id":"para_136"},{"text":"By an action brought before the Helsingin käräjäoikeus (Helsinki District Court) (Finland) on 11 October 1996, Anheuser-Busch\n sought to prohibit Budvar from continuing or recommencing the use in Finland of the trade marks Budĕjovický Budvar, Budweiser\n Budvar, Budweiser, Budweis, Budvar, Bud and Bu …","paragraph_id":"para_137"},{"text":"27","paragraph_id":"para_138"},{"text":"Anheuser-Busch argued that the signs used by Budvar could be confused, within the meaning of the Tavaramerkkilaki, with its\n trade marks since those signs and trade marks designate identical or similar types of goods.","paragraph_id":"para_139"},{"text":"28","paragraph_id":"para_140"},{"text":"By the same action, Anheuser-Busch sought a further order prohibiting Budvar from using in Finland, on pain of a fine pursuant\n to the Toiminimilaki, the trade names ‘Budĕjovický Budvar, národní podnik’, ‘Budweiser Budvar’, ‘Budweiser Budvar, national\n enterprise’, ‘Budweiser Budvar, Entreprise nationale’ and ‘Budweiser Budvar, National Corporation’, on the ground that those\n names were liable to be confused with its trade marks.","paragraph_id":"para_141"},{"text":"29","paragraph_id":"para_142"},{"text":"In its defence, Budvar contended that the signs used in Finland to market its beer could not be confused with Anheuser-Busch’s\n trade marks. It also submitted that, with respect to the sign ‘Budweiser Budvar’, the registration of its trade name in Czech,\n English and French conferred on it, pursuant …","paragraph_id":"para_143"},{"text":"30","paragraph_id":"para_144"},{"text":"By its judgment of 1 October 1998, the Helsingin käräjäoikeus held that the beer-bottle labels used by Budvar in Finland and,\n in particular, the dominant sign appearing on that label, ‘Budĕjovický Budvar’, especially when taken as a whole, were so\n different from Anheuser-Busch’s trade marks and labels that the goods in question could not be confused.","paragraph_id":"para_145"},{"text":"31","paragraph_id":"para_146"},{"text":"It further held that the sign ‘BREWED AND BOTTLED BY THE BREWERY BUDWEISER BUDVAR national enterprise’, appearing on the labels\n below the abovementioned dominant sign and in considerably smaller letters, was not used as a mark but merely indicated the\n trade name of the brewery. It found that Budva …","paragraph_id":"para_147"},{"text":"32","paragraph_id":"para_148"},{"text":"On appeal, the Helsingin hovioikeus (Helsinki Court of Appeal) (Finland), by judgment of 27 June 2000, ruled that the abovementioned\n witness statements did not suffice to prove that the English version of Budvar’s trade name was, at least to some extent,\n well known in the relevant trade circles in …","paragraph_id":"para_149"},{"text":"33","paragraph_id":"para_150"},{"text":"Both Anheuser-Busch and Budvar then appealed to the Korkein oikeus (Supreme Court) against the judgment given by the Helsingin\n hovioikeus, relying, essentially, on the arguments which they had already put forward at first instance and on appeal.","paragraph_id":"para_151"},{"text":"34","paragraph_id":"para_152"},{"text":"In its order for reference, the Korkein oikeus observes that it follows from paragraph 35 of the judgment in Joined Cases\n C‑300/98 and C‑392/98 Dior and Others [2000] ECR I‑11307 that the Court has jurisdiction to interpret a provision of the TRIPs Agreement if it may be applied both\n to situations falling within the scope of national law and to situations falling within the scope of Community law, as is\n the case in the field of trade marks.","paragraph_id":"para_153"},{"text":"35","paragraph_id":"para_154"},{"text":"The national court adds that, in paragraphs 47 to 49 of the judgment in Dior , the Court held that, in the areas to which the TRIPs Agreement applies, a situation falls within the scope of Community\n law where the Community has already adopted legislation in the relevant field but this is not so in the case of a field in\n which the Community has not yet legislated and which, consequently, falls within the competence of the Member States.","paragraph_id":"para_155"},{"text":"36","paragraph_id":"para_156"},{"text":"According to the Korkein oikeus, the provisions of the TRIPs Agreement on trade marks relate to a field in which the Community\n has already adopted legislation and which therefore falls within the scope of Community law. By contrast, the Community has\n not, as yet, adopted legislation relating to trade names.","paragraph_id":"para_157"},{"text":"37","paragraph_id":"para_158"},{"text":"As regards the temporal applicability of the TRIPs Agreement to the main case, the national court observes that it follows\n from paragraphs 49 and 50 of the judgment in Case C‑89/99 Schieving-Nijstad and Others [2001] ECR I‑5851 that, in accordance with Article 70(1), the TRIPs Agreement is applicable in so far as the infringement\n of intellectual property rights continues beyond the date on which TRIPs became applicable with regard to the Community and\n the Member States.","paragraph_id":"para_159"},{"text":"38","paragraph_id":"para_160"},{"text":"The national court also observes that Article 70(2) of the TRIPs Agreement provides that, save where otherwise provided, that\n agreement gives rise to obligations in respect of all subject-matter existing at the date of application of the TRIPs Agreement\n to the Member in question, which is protected in that Member on that date or which meets or comes subsequently to meet the\n criteria for protection laid down in that agreement.","paragraph_id":"para_161"},{"text":"39","paragraph_id":"para_162"},{"text":"Accordingly, the Korkein oikeus decided to stay the proceedings and to refer the following questions to the Court for a preliminary\n ruling:","paragraph_id":"para_163"},{"text":"‘1.\n If the conflict between a trade mark and a sign alleged to infringe it is situated at a point in time before the entry into\n force of the TRIPs Agreement, do the provisions of the TRIPs Agreement apply to the question of which right has the earlier\n legal basis, when the alleged infringement of the trade mark is said to continue after the date on which the TRIPs Agreement\n became applicable in the Community and the Member States?","paragraph_id":"para_164"},{"text":"2.\n If the answer to Question 1 is affirmative:","paragraph_id":"para_165"},{"text":"(a)\n Can the trade name of an undertaking also act as a sign for goods or services within the meaning of the first sentence of\n Article 16(1) of the TRIPs Agreement?","paragraph_id":"para_166"},{"text":"(b)\n If the answer to Question 2(a) is affirmative, on what conditions may a trade name be regarded as a sign for goods or services\n within the meaning of the first sentence of Article 16(1) of the TRIPs Agreement?","paragraph_id":"para_167"},{"text":"3.\n If the answer to Question 2(a) is affirmative:","paragraph_id":"para_168"},{"text":"(a)\n How is the reference in the third sentence of Article 16(1) of the TRIPs Agreement to existing prior rights to be interpreted?\n May the right to a trade name also be regarded as an existing prior right within the meaning of the third sentence of Article\n 16(1) of the TRIPs Agreement?","paragraph_id":"para_169"},{"text":"(b)\n If the answer to Question 3(a) is affirmative, how is the said reference in the third sentence of Article 16(1) of the TRIPs\n Agreement to existing prior rights to be interpreted in the case of a trade name which is not registered or established by\n use in the State in which the trade mark is r …","paragraph_id":"para_170"},{"text":"(i)\n whether the trade name was well known at least to some extent among the relevant trade circles in the State in which the trade\n mark is registered and in which protection is sought for it, before the point in time at which registration of the trade mark\n was applied for in the State in question; or","paragraph_id":"para_171"},{"text":"(ii)\n whether the trade name was used in commerce directed to the State in which the trade mark is registered and in which protection\n is sought for it, before the point in time at which registration of the trade mark was applied for in the State in question;\n or","paragraph_id":"para_172"},{"text":"(iii)\n what other factor may decide whether the trade name is to be regarded as an existing prior right within the meaning of the\n third sentence of Article 16(1) of the TRIPs Agreement?’","paragraph_id":"para_173"},{"text":"The questions referred for a preliminary ruling","paragraph_id":"para_174"},{"text":"Admissibility of the reference for a preliminary ruling","paragraph_id":"para_175"},{"text":"40","paragraph_id":"para_176"},{"text":"According to Anheuser-Busch, the reference for a preliminary ruling is inadmissible in its entirety since the main case does\n not fall within either the temporal or the substantive scope of the TRIPs Agreement. Accordingly, the Court does not, in the\n present case, have jurisdiction to interpret the relevant provisions of that agreement.","paragraph_id":"para_177"},{"text":"41","paragraph_id":"para_178"},{"text":"It is apparent from its case-law that the Court has jurisdiction to interpret a provision of the TRIPs Agreement for the purpose\n of responding to the needs of the judicial authorities of the Member States where they are called upon to apply their national\n rules with a view to ordering measures for …","paragraph_id":"para_179"},{"text":"42","paragraph_id":"para_180"},{"text":"Since the Community is a party to the TRIPs Agreement, it is indeed under an obligation to interpret its trade-mark legislation,\n as far as possible, in the light of the wording and purpose of that agreement (see, with respect to a situation falling within\n the scope of both a provision of the TRIPs Agreement and Directive 89/104, Case C‑49/02 Heidelberger Bauchemie [2004] ECR I‑0000, paragraph 20).","paragraph_id":"para_181"},{"text":"43","paragraph_id":"para_182"},{"text":"The Court therefore has jurisdiction to interpret Article 16(1) of the TRIPs Agreement, which is the subject of the second\n and third questions referred for a preliminary ruling.","paragraph_id":"para_183"},{"text":"44","paragraph_id":"para_184"},{"text":"Whether the TRIPs Agreement, and in particular Article 16 thereof, is relevant to the settlement of the dispute in the main\n case depends on what interpretation is to be given to that article, which is precisely the subject of the second and third\n questions referred for a preliminary ruling. It fol …","paragraph_id":"para_185"},{"text":"45","paragraph_id":"para_186"},{"text":"The question of temporal applicability is the subject of the first question referred.","paragraph_id":"para_187"},{"text":"46","paragraph_id":"para_188"},{"text":"Accordingly, the reference for a preliminary ruling must be declared admissible.","paragraph_id":"para_189"},{"text":"The first question","paragraph_id":"para_190"},{"text":"47","paragraph_id":"para_191"},{"text":"By its first question, the national court asks, essentially, whether the TRIPs Agreement applies in the event of a conflict\n between a trade mark and a sign alleged to infringe that trade mark, where that conflict arose before the date of application\n of the TRIPs Agreement but continued beyond that date.","paragraph_id":"para_192"},{"text":"48","paragraph_id":"para_193"},{"text":"The Court has already held, in paragraphs 49 and 50 of the judgment in Schieving-Nijstad , cited above, that, even if the alleged infringement of a trade mark arose before the date of application of the TRIPs Agreement\n to the Community and the Member States – that is to say, prior to 1 January 1996 …","paragraph_id":"para_194"},{"text":"49","paragraph_id":"para_195"},{"text":"The effect of Article 70(1) of the TRIPs Agreement is merely to exclude the imposition of obligations under that agreement\n in respect of ‘acts which occurred’ before its date of application but it does not exclude such obligations in respect of\n situations which continue beyond that date. By contra …","paragraph_id":"para_196"},{"text":"50","paragraph_id":"para_197"},{"text":"Furthermore, Article 70(4) of the TRIPs Agreement applies to acts in respect of specific objects embodying protected subject-matter\n which become infringing under the terms of legislation in conformity with that agreement, and which were commenced, or in\n respect of which a significant investment wa …","paragraph_id":"para_198"},{"text":"51","paragraph_id":"para_199"},{"text":"In the present case, it is apparent from the decision to refer that the acts which Budvar is alleged to have committed in\n Finland certainly commenced before the date of application of the TRIPs Agreement but that they continued after that date.\n Moreover, it is undisputed that the proceedings alleg …","paragraph_id":"para_200"},{"text":"52","paragraph_id":"para_201"},{"text":"It follows that, in accordance with Article 70(1) and (2), the TRIPs Agreement applies to that situation.","paragraph_id":"para_202"},{"text":"53","paragraph_id":"para_203"},{"text":"Consequently, the answer to the first question must be that the TRIPs Agreement applies in the event of a conflict between\n a trade mark and a sign alleged to infringe that trade mark where that conflict arose before the date of application of the\n TRIPs Agreement but continued beyond that date.","paragraph_id":"para_204"},{"text":"The second and third questions","paragraph_id":"para_205"},{"text":"Preliminary observations","paragraph_id":"para_206"},{"text":"54","paragraph_id":"para_207"},{"text":"The Court has already held that, having regard to their nature and structure, the provisions of the TRIPs Agreement do not\n have direct effect. Those provisions are not, in principle, among the rules in the light of which the Court is to review the\n legality of measures of the Community institutions …","paragraph_id":"para_208"},{"text":"55","paragraph_id":"para_209"},{"text":"However, it follows from the Court’s case-law that, when called upon to apply national rules with a view to ordering measures\n for the protection of rights in a field to which the TRIPs Agreement applies and in which the Community has already legislated,\n as is the case with the field of trade marks …","paragraph_id":"para_210"},{"text":"56","paragraph_id":"para_211"},{"text":"Moreover, according to that case-law, the competent authorities called on to apply and interpret the relevant national law\n must likewise do so, as far as possible, in the light of the wording and the purpose of Directive 89/104 so as to achieve\n the result it has in view and thereby comply with the third paragraph of Article 249 EC (see, inter alia, Case C‑218/01 Henkel [2004] ECR I‑0000, paragraph 60 and the case-law cited there).","paragraph_id":"para_212"},{"text":"57","paragraph_id":"para_213"},{"text":"Consequently, in the present case, the relevant provisions of the national trade-mark law must be applied and interpreted,\n as far as possible, in the light of the wording and purpose of the relevant provisions of both Directive 89/104 and the TRIPs\n Agreement.","paragraph_id":"para_214"},{"text":"The second question","paragraph_id":"para_215"},{"text":"58","paragraph_id":"para_216"},{"text":"By its second question, the national court is asking, essentially, whether and, if so, under what conditions a trade name\n may be regarded as a sign for the purposes of the first sentence of Article 16(1) of the TRIPs Agreement with the result that,\n under that provision, the proprietor of a trade mark has an exclusive right to prevent a third party from using that trade\n name without his consent.","paragraph_id":"para_217"},{"text":"59","paragraph_id":"para_218"},{"text":"First, with respect to Directive 89/104, it follows from the Court’s case-law on the definition of use by a third party, for\n which provision is made in Article 5(1) of that directive, that the exclusive right conferred by a trade mark was intended\n to enable the trade mark proprietor to protect his …","paragraph_id":"para_219"},{"text":"60","paragraph_id":"para_220"},{"text":"That is the case, in particular, where the use of that sign allegedly made by the third party is such as to create the impression\n that there is a material link in trade between the third party’s goods and the undertaking from which those goods originate.\n It must be established whether the consumer …","paragraph_id":"para_221"},{"text":"61","paragraph_id":"para_222"},{"text":"The national court must establish whether that is the case in the light of the specific circumstances of the use of the sign\n allegedly made by the third party in the main case, namely, in the present case, the labelling used by Budvar in Finland.","paragraph_id":"para_223"},{"text":"62","paragraph_id":"para_224"},{"text":"The national court must also confirm whether the use made in the present case is one ‘in the course of trade’ and ‘in relation\n to goods’ within the meaning of Article 5(1) of Directive 89/104 (see, inter alia, Arsenal Football Club , paragraphs 40 and 41).","paragraph_id":"para_225"},{"text":"63","paragraph_id":"para_226"},{"text":"Where those conditions are satisfied, it follows from the case-law of the Court that, in the event of identity of the sign\n and the trade mark and of the goods or services, the protection conferred by Article 5(1)(a) of Directive 89/104 is absolute,\n whereas, in the situation provided for in Article …","paragraph_id":"para_227"},{"text":"64","paragraph_id":"para_228"},{"text":"However, where the examinations to be carried out by the national court, referred to in paragraph 60 of this judgment, show\n that the sign in question in the main case is used for purposes other than to distinguish the goods concerned – for example,\n as a trade or company name – reference must, purs …","paragraph_id":"para_229"},{"text":"65","paragraph_id":"para_230"},{"text":"Secondly, with respect to the TRIPs Agreement, it should be observed that the primary objective of that agreement is to strengthen\n and harmonise the protection of intellectual property on a worldwide scale (see Schieving-Nijstad , paragraph 36 and the case-law cited there).","paragraph_id":"para_231"},{"text":"66","paragraph_id":"para_232"},{"text":"According to the preamble, the purpose of the TRIPs Agreement is to ‘reduce distortions and impediments to international trade’\n by ‘taking into account the need to promote effective and adequate protection of intellectual property rights’ while at the\n same time ensuring that ‘measures and procedures to enforce intellectual property rights do not themselves become barriers\n to legitimate trade’.","paragraph_id":"para_233"},{"text":"67","paragraph_id":"para_234"},{"text":"Article 16 of the TRIPs Agreement confers on the proprietor of a registered trade mark a minimum standard of exclusive rights\n agreed at international level which all the members of the WTO must guarantee in their domestic legislation. Those exclusive\n rights protect the proprietor against any infri …","paragraph_id":"para_235"},{"text":"68","paragraph_id":"para_236"},{"text":"Article 15 of the TRIPs Agreement provides, inter alia, that any sign, or any combination of signs, capable of distinguishing\n the goods or services of one undertaking from those of other undertakings, is to be capable of constituting a trade mark.","paragraph_id":"para_237"},{"text":"69","paragraph_id":"para_238"},{"text":"Thus, like Article 2 of Directive 89/104, Article 15 of the TRIPs Agreement lays down a guarantee of origin which is the essential\n function of a trade mark (see, with respect to that directive, inter alia, Arsenal Football Club , paragraph 49).","paragraph_id":"para_239"},{"text":"70","paragraph_id":"para_240"},{"text":"It follows from those factors that the interpretation of the relevant provisions of the national trade-mark law so far as\n possible in the light of the wording and purpose of the relevant provisions of Community law, in the present case those of\n Directive 89/104, is not prejudiced by an interpretation in keeping with the wording and purpose of the relevant provisions\n of the TRIPs Agreement (see paragraph 57 of this judgment).","paragraph_id":"para_241"},{"text":"71","paragraph_id":"para_242"},{"text":"The relevant provisions of national trade-mark law must therefore be applied and interpreted to the effect that the exercise\n of the exclusive right conferred on the proprietor of the trade mark to prevent the use of the sign of which that mark consists\n or of a sign similar to that mark must be res …","paragraph_id":"para_243"},{"text":"72","paragraph_id":"para_244"},{"text":"Such an interpretation is, moreover, supported by the general purpose of the TRIPs Agreement, referred to in paragraph 66\n of this judgment, which is to ensure that a balance is maintained between the aim of reducing distortions and impediments\n to international trade and that of promoting effective …","paragraph_id":"para_245"},{"text":"73","paragraph_id":"para_246"},{"text":"Moreover, the conditions laid down in Article 16 of the TRIPs Agreement, in the authentic French, English and Spanish versions,\n that the use must be made ‘in the course of trade’ (‘au cours d'opérations commerciales’, ‘en el curso de operaciones comerciales’)\n and ‘for goods’ (‘pour des produits’, …","paragraph_id":"para_247"},{"text":"74","paragraph_id":"para_248"},{"text":"It should be added that, should it become apparent from the examinations to be carried out by the national court that, in\n the present case, the proprietor of the trade mark may assert his exclusive rights under Article 16(1) of the TRIPs Agreement\n to prevent the use allegedly made by the third party, that agreement contains a further provision which may be relevant in\n resolving the dispute in the main case.","paragraph_id":"para_249"},{"text":"75","paragraph_id":"para_250"},{"text":"It should be remembered that it is for the Court to provide the national court with all the elements of interpretation of\n Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court specifically\n refers to them in its questions (see Case C‑456/02 Trojani [2004] ECR I‑0000, paragraph 38 and the case-law cited there).","paragraph_id":"para_251"},{"text":"76","paragraph_id":"para_252"},{"text":"More specifically, in the present case, it is appropriate to examine the possible impact of Article 17 of the TRIPs Agreement,\n which allows the members of the WTO to provide for limited exceptions to the rights conferred by a trade mark, for example\n with respect to fair use of descriptive terms, p …","paragraph_id":"para_253"},{"text":"77","paragraph_id":"para_254"},{"text":"With respect to the Community, provision is made for such an exception in Article 6(1)(a) of Directive 89/104, which, essentially,\n allows third parties to use signs to indicate their own name or address, provided that they use them in accordance with honest\n practices in industrial or commercial matters.","paragraph_id":"para_255"},{"text":"78","paragraph_id":"para_256"},{"text":"Certainly, the Council of the European Union and the Commission of the European Communities issued a joint declaration, which\n was recorded in the minutes of the Council when Directive 89/104 was adopted, that that provision covers only natural persons’\n names.","paragraph_id":"para_257"},{"text":"79","paragraph_id":"para_258"},{"text":"However, the interpretation given in such a declaration cannot be used where no reference is made to its content in the wording\n of the provision in question and that content therefore has no legal significance. The Council and the Commission themselves\n explicitly recognised that limitation in the …","paragraph_id":"para_259"},{"text":"80","paragraph_id":"para_260"},{"text":"No reference is made in the wording of Article 6(1)(a) of Directive 89/104 to the considerable restriction of the meaning\n of ‘name’ resulting from the declaration mentioned in paragraph 78 of this judgment. That declaration therefore has no legal\n significance.","paragraph_id":"para_261"},{"text":"81","paragraph_id":"para_262"},{"text":"A third party may, in principle, rely on the exception provided for in Article 6(1)(a) of Directive 89/104 in order to be\n entitled to use a sign which is identical or similar to a trade mark for the purpose of indicating his trade name, even if\n that constitutes a use falling within the scope of Article 5(1) of that directive which the trade mark proprietor may prohibit\n by virtue of the exclusive rights conferred on him by that provision.","paragraph_id":"para_263"},{"text":"82","paragraph_id":"para_264"},{"text":"It is also necessary that the use be made in accordance with honest practices in industrial or commercial matters, which is\n the only assessment criterion referred to in Article 6(1) of Directive 89/104. The condition of ‘honest practice’ is, in essence,\n an expression of the duty to act fairly in r …","paragraph_id":"para_265"},{"text":"83","paragraph_id":"para_266"},{"text":"In assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the\n use of the third party’s trade name is understood by the relevant public, or at least a significant section of that public,\n as indicating a link between the third party’s good …","paragraph_id":"para_267"},{"text":"84","paragraph_id":"para_268"},{"text":"It is for the national court to carry out an overall assessment of all the relevant circumstances, which include the labelling\n of the bottle in order to assess, more specifically, whether the producer of the drink bearing the trade name can be regarded\n as unfairly competing with the proprietor of the trade mark (see, to that effect, Gerolsteiner Brunnen , paragraphs 25 and 26).","paragraph_id":"para_269"},{"text":"85","paragraph_id":"para_270"},{"text":"Accordingly, the second question must be answered as follows:","paragraph_id":"para_271"},{"text":"–\n a trade name may constitute a sign within the meaning of the first sentence of Article 16(1) of the TRIPs Agreement. That\n provision is intended to confer on the proprietor of a trade mark the exclusive right to prevent a third party from using\n such a sign if the use in question prejudices or is liable to prejudice the functions of the trade mark, in particular its\n essential function of guaranteeing to consumers the origin of the goods;","paragraph_id":"para_272"},{"text":"–\n the exceptions provided for in Article 17 of the TRIPs Agreement are intended, inter alia, to enable a third party to use\n a sign which is identical or similar to a trade mark to indicate his trade name, provided that such use is in accordance with\n honest practices in industrial or commercial matters.","paragraph_id":"para_273"},{"text":"The third question","paragraph_id":"para_274"},{"text":"86","paragraph_id":"para_275"},{"text":"By its third question, the national court is asking, essentially, whether and, if so, under what conditions a trade name which\n is not registered or established by use in the State in which the trade mark is registered and in which protection against\n the trade name in question is sought may be rega …","paragraph_id":"para_276"},{"text":"87","paragraph_id":"para_277"},{"text":"If it is apparent from the examinations to be carried out by the national court in accordance with the principles set out\n in paragraph 60 of this judgment in response to the second question that the use made of the trade name falls within the scope\n of the first sentence of Article 16(1) of the TRIPs Agreement, the proprietor of the trade mark has an exclusive right to\n prevent such use, subject to the provisions of Article 17 of that agreement.","paragraph_id":"para_278"},{"text":"88","paragraph_id":"para_279"},{"text":"However, the third sentence of Article 16(1) of the TRIPs Agreement provides that that exclusive right must not prejudice\n any ‘existing prior right’.","paragraph_id":"para_280"},{"text":"89","paragraph_id":"para_281"},{"text":"That provision must be understood as meaning that, where the proprietor of a trade name has a right falling within the scope\n of the TRIPs Agreement which arose prior to that conferred by the trade mark with which it is alleged to conflict and which\n entitles him to use a sign identical or similar t …","paragraph_id":"para_282"},{"text":"90","paragraph_id":"para_283"},{"text":"For that provision, thus understood, to be applicable, the third party must first of all be able to rely on a right falling\n within the substantive scope of the TRIPs Agreement.","paragraph_id":"para_284"},{"text":"91","paragraph_id":"para_285"},{"text":"It should be observed that a trade name is a right falling within the scope of the term ‘intellectual property’ within the\n meaning of Article 1(2) of the TRIPs Agreement. Moreover, it follows from Article 2(1) of the TRIPs Agreement that the protection\n of trade names, for which specific provision …","paragraph_id":"para_286"},{"text":"92","paragraph_id":"para_287"},{"text":"Accordingly, in so far as it is existing subject-matter within the meaning of Article 70(2) of the TRIPs Agreement, as was\n explained in paragraph 49 of this judgment, the trade name in question must be protected under the TRIPs Agreement.","paragraph_id":"para_288"},{"text":"93","paragraph_id":"para_289"},{"text":"The trade name is therefore a right falling within the substantive scope of the TRIPs Agreement, so that the first condition\n laid down by the third sentence of Article 16(1) of that agreement is satisfied.","paragraph_id":"para_290"},{"text":"94","paragraph_id":"para_291"},{"text":"It must, moreover, be an existing right. The term ‘existing’ means that the right concerned must fall within the temporal\n scope of the TRIPs Agreement and still be protected at the time when it is relied on by its proprietor in order to counter\n the claims of the proprietor of the trade mark with which it is alleged to conflict.","paragraph_id":"para_292"},{"text":"95","paragraph_id":"para_293"},{"text":"In the present case, it must therefore be ascertained whether the trade name in question, which the parties agree is neither\n registered nor established by use in the Member State in which the trade mark is registered and in which the protection afforded\n by that mark against the trade name in question is sought, satisfies the conditions set out in the preceding paragraph of\n this judgment.","paragraph_id":"para_294"},{"text":"96","paragraph_id":"para_295"},{"text":"It follows from Article 8 of the Paris Convention, which, as was explained in paragraph 91 of this judgment, must be complied\n with by virtue of the TRIPs Agreement, that the protection of trade names is to be guaranteed and that such protection may\n not be made subject to any registration requirement.","paragraph_id":"para_296"},{"text":"97","paragraph_id":"para_297"},{"text":"As regards any conditions relating to minimum use or minimum awareness of the trade name to which that name may, according\n to the national court, be subject under Finnish law, it should be observed that, in principle, neither Article 16(1) of the\n TRIPs Agreement nor Article 8 of the Paris Convention precludes such conditions.","paragraph_id":"para_298"},{"text":"98","paragraph_id":"para_299"},{"text":"Finally, ‘priority’ of the right in question for the purposes of the third sentence of Article 16(1) of the TRIPs Agreement\n means that the basis for the right concerned must have arisen at a time prior to the grant of the trade mark with which it\n is alleged to conflict. As the Advocate General poi …","paragraph_id":"para_300"},{"text":"99","paragraph_id":"para_301"},{"text":"It should be added that the principle of priority is likewise enshrined in Directive 89/104 and, more specifically, in Articles\n 4(2) and 6(2) thereof.","paragraph_id":"para_302"},{"text":"100","paragraph_id":"para_303"},{"text":"In light of the above, the answer to the third question must be that a trade name which is not registered or established by\n use in the Member State in which the trade mark is registered and in which protection against the trade name in question is\n sought may be regarded as an existing prior right …","paragraph_id":"para_304"},{"text":"Costs","paragraph_id":"para_305"},{"text":"101","paragraph_id":"para_306"},{"text":"The costs incurred by the Finnish Government and by the Commission in submitting observations to the Court are not recoverable.\n Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court,\n the decision on costs is a matter for that court.","paragraph_id":"para_307"},{"text":"On those grounds, the Court (Grand Chamber) rules as follows:","paragraph_id":"para_308"},{"text":"1.\n The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), as set out in Annex 1 C to the Agreement\n establishing the World Trade Organisation, approved on behalf of the European Community, as regards matters within its competence,\n by Council Decision 94/800/EC of …","paragraph_id":"para_309"},{"text":"2.\n A trade name may constitute a sign within the meaning of the first sentence of Article 16(1) of the Agreement on Trade-Related\n Aspects of Intellectual Property Rights (TRIPs Agreement). That provision is intended to confer on the proprietor of a trade\n mark the exclusive right to prevent a thir …","paragraph_id":"para_310"},{"text":"The exceptions provided for in Article 17 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs\n Agreement) are intended, inter alia, to enable a third party to use a sign which is identical or similar to a trade mark to\n indicate his trade name, provided that such use is in accordance with honest practices in industrial or commercial matters.","paragraph_id":"para_311"},{"text":"3.\n A trade name which is not registered or established by use in the Member State in which the trade mark is registered and in\n which protection against the trade name in question is sought may be regarded as an existing prior right within the meaning\n of the third sentence of Article 16(1) of the …","paragraph_id":"para_312"},{"text":"Signatures.","paragraph_id":"para_313"},{"text":"1 –","paragraph_id":"para_314"},{"text":"Language of the case: Finnish.","paragraph_id":"para_315"}],"word_count":9952,"cites":["C-300/98","C-392/98","C-89/99","C-49/02","C-218/01","C-206/01","C-292/00","C-291/00","C-23/01","C-456/02","C-100/02"],"cited_by":[],"sha256":"39b398796e9da94dd48fd7a9203f10d2ad06e98add9634f44e0c9dfb6702237f","source_url":"https://publications.europa.eu/resource/celex/62002CJ0245","fetched_at":"2026-10-02T14:53:04.743+00:00","canonical":"https://legal.exploreworldai.com/ai/judgments/eu/c-245-02","risk_graph":"https://legal.exploreworldai.com/api/public/v1/risk?id=eu:c-245-02","relations_graph":"https://legal.exploreworldai.com/api/public/v1/relations?id=eu:c-245-02","changes":"https://legal.exploreworldai.com/api/public/v1/eu-praxis/changes","agent":"https://legal.exploreworldai.com/api/public/v1/eu-praxis/agent?id=eu:c-245-02"},"hash":"sha256:cbb7a477a618f0a0857d9824b147d5daad4989c296579723935bf76b5aa2b618","version":"legal-2026-10-13","expires":"2026-10-14T00:00:00.000Z","dependency":{"index_version":"legal-2026-10-13+legal-2026-10-13+2026-10-13T12:55:18","content_hash":"sha256:cbb7a477a618f0a0857d9824b147d5daad4989c296579723935bf76b5aa2b618","revalidate_after":"2026-10-13T14:23:31.892Z","max_copy_age_seconds":3600,"policy":"revalidate-required; attribution-preferred","changelog":"https://legal.exploreworldai.com/api/public/v1/dependency","verify":"https://legal.exploreworldai.com/api/public/v1/verify","stale_copy_invalid":true},"canonical":"https://legal.exploreworldai.com/api/public/v1/judgment-text?id=eu:c-245-02","follow":[{"rel":"risk","href":"https://legal.exploreworldai.com/api/public/v1/risk?id=eu:c-245-02"},{"rel":"relations","href":"https://legal.exploreworldai.com/api/public/v1/relations?id=eu:c-245-02"},{"rel":"agent","href":"https://legal.exploreworldai.com/api/public/v1/eu-praxis/agent?id=eu:c-245-02"},{"rel":"obligations","href":"https://legal.exploreworldai.com/api/public/v1/obligation-chain"},{"rel":"changes","href":"https://legal.exploreworldai.com/api/public/v1/whats-new?jurisdiction=eu"}],"disclaimer":"Source reference with official identifier. 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