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Cat in a fix; fish comes to the rescue

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Today the Advocate General, Mme Juliane Kokott, delivered her Opinion in Affaire C?59/08 Copad SA v Christian Dior couture SA e.a. This Opinion gives advice to the European Court of Justice on a reference for a preliminary ruling on the following questions:

"1. Must Article 8(2) of First Council Directive No 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in the licensing contract prohibiting, on grounds of the trade mark's prestige, sale to discount stores?

2. Must Article 7(1) of that directive be interpreted as meaning that a licensee who puts goods bearing a trade mark on the market in the European Economic Area in disregard of a provision of the licensing contract prohibiting, on grounds of the trade mark's prestige, sale to discount stores, does so without the consent of the trade mark proprietor?

3. If not, can the proprietor invoke such a provision to oppose further commercialisation of the goods, on the basis of Article 7(2) of that directive?".

The IPKat's anger at finding that this Opinion was available in only 11 languages, not one of which was English, was tempered by his discovery that his talented and enterprising friend Anat Paz (Lovells) had subjected the entire Opinion to a translation by Babel Fish which, it must be said, gives a relatively good account of the AG's thoughts. You can read the Babel Fish version here. On the assumption that the untranslated word "soldeur" means "discount store", the AG's conclusion reads as follows:

"1. Article 8, paragraph 2 of Directive 89/104 must be interpreted as meaning that the trade mark owner can claim the rights conferred by it to a licensee who does not comply with a clause licensing contract under which the sale to soldeurs is prohibited when the sale is such an attack on the product image that the quality of it is questioned.

2. Article 7 paragraph 1 of Directive 89/104 must therefore be interpreted as meaning that a licensee who makes products under a trade mark in breach of a clause in the license does not have the consent of the owner of the mark if, in distributing the products, it violates the same time trade mark rights under Article 8, paragraph 2.

3. Article 7, paragraph 2 of Directive 89/104 allows the trade mark owner to oppose what products bearing it are distributed by a soldeur only because a clause in the license prohibits the licensee to sell products to soldeurs".

The Kat is curious to see whether the full court will take so sympathetic a view.

Full post as published by IPKat on December 03, 2008 (boomark / email).