7 Colum. J. Eur. L. 385 (2001)
Dr. Marta Pertegás Sender. Institute for International Trade Law, K.U. Leuven; Nauta Dutilh, Brussels.
Facts and procedure
Central to the two joined cases was the assessment of the effects of the WTO- Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter “TRIPs Agreement” or “TRIPs”) in the enforcement of intellectual property rights before national courts.
As defined by the Court of Justice,’ the primary objective of the TRIPs Agreement is to strengthen and harmonise the protection of intellectual property on a worldwide scale. In particular, Part III of the TRIPs Agreement relates to the enforcement of intellectual property rights. The main provision at stake in both cases was Article 50(6) of the TRIPS Agreement, which prescribes that provisional measures taken in proceedings related to the enforcement of intellectual property rights can be revoked or otherwise cease to have effect if proceedings on the merits are not initiated within a reasonable period. In other words, the effect of provisional measures related to the enforcement of intellectual property rights is subordinated to the filing of proceedings on the merits.
However, in several Member States, and particularly in the Netherlands, interim proceedings leading to a summary judgment – such as the Dutch kort geding (literally, “short proceedings”) – have in practice lost their temporary character and become the ordinary way to litigate disputes, especially in the area of intellectual property. In the two referred cases, the main proceedings were kort geding proceedings related to the enforcement of a trademark and an industrial design, respectively.
The first case concerned an alleged trademark infringement. Parfums Christian Dior, which markets its products through a selective distribution system, claimed that the company Tuk had infringed Dior’s registered trademarks (for the perfumery products Tendre Poison, Eau Sauvage and Dolce Vita) by selling perfume bearing these marks in the European Economic Area. The plaintiff held that its rights were not exhausted, since the perfume had not been put on the market in the European Economic Area by Dior or with its consent. On the basis of Article 289 et seq. of the Dutch Code of Civil Procedure, the national court granted an interlocutory injunction against Tuk and stayed the proceedings to ask the Court of Justice whether Article 50(6) of th TRIPs Agreement is to be interpreted as having direct effect, in the sense that its provisions take effect before the national courts, even in the absence of any corresponding provision of national law.
In the second case, the plaintiff, a manufacturer of a type of scaffolding known as Allroundsteiger, filed proceedings against a competitor. Although Assco’s patent had expired, it based its action on the Dutch rules on unlawful competition that may apply to prevent wrongful duplication of an industrial design. In order to assess the effects of the summary judgment, the same question as in the Dior case arose again and was put to the consideration of the Court of Justice. In addition, the referring court asked whether the enforcement of an industrial design on the basis of the rules on unlawful competition fell under the scope of the term “intellectual property right” as in Article 50(1) of the TRIPs Agreement.
