JUDGMENT OF THE COURT
13 September 2001 (1)
(Agreement establishing the World Trade Organisation - Article 50(6) of the TRIPs Agreement - Interpretation - Direct effect - Application to proceedings pending at the time of entry into force in the State concerned - Conditions regarding the time-limit for bringing substantive proceedings - Calculation of that time-limit)
In Case C-89/99,
REFERENCE to the Court under Article 177 of the EC Treaty (now Article 234 EC) by the Hoge Raad der Nederlanden (Netherlands) for a preliminary ruling in the proceedings pending before that court between
Schieving-Nijstad vof and Others
and
Robert Groeneveld,
on the interpretation of Article 50(6) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, approved on behalf of the Community, as regards matters within its competence, by Council Decision 94/800/EC of 22 December 1994 (OJ 1994 L 336, p. 1),
THE COURT,
composed of: G.C. Rodríguez Iglesias, President, C. Gulmann, A. La Pergola, M. Wathelet and V. Skouris (Presidents of Chambers), D.A.O. Edward (Rapporteur), J.-P. Puissochet, P. Jann, L. Sevón, R. Schintgen, F. Macken, N. Colneric, S. von Bahr, J.N. Cunha Rodrigues and C.W.A. Timmermans, Judges,
Advocate General: F.G. Jacobs,
Registrar: L. Hewlett, Administrator,
after considering the written observations submitted on behalf of:
- Mr Groeneveld, by L.M. Schreuders-Ebbekink, advocaat,
- the French Government, by K. Rispal-Bellanger and S. Seam, acting as Agents,
- the Portuguese Government, by L. Fernandes, T. Moreira and J. Palma, acting as Agents,
- the United Kingdom Government, by J.E. Collins, acting as Agent, assisted by M. Hoskins, barrister,
- the Council of the European Union, by J. Huber and G. Houttuin, acting as Agents,
- the Commission of the European Communities, by P.J. Kuijper, acting as Agent,
having regard to the Report for the Hearing,
after hearing the oral observations of Schieving-Nijstad vof and Others, represented by P. Garretsen, advocaat, and of the Commission, represented by H.M.H. Speyart, acting as Agent, at the hearing on 17 October 2000,
after hearing the Opinion of the Advocate General at the sitting on 15 February 2001,
gives the following
The Community rules
Whereas, by its nature, the Agreement establishing the World Trade Organisation, including the Annexes thereto, is not susceptible to being directly invoked in Community or Member State courts.
The following multilateral agreements and acts are hereby approved on behalf of the European Community with regard to that portion of them which falls within the competence of the European Community:
- the Agreement establishing the World Trade Organisation, and also the Agreements in Annexes 1, 2 and 3 to that Agreement;
....
...
(b) the provision of adequate standards and principles concerning the availability, scope and use of trade-related intellectual property rights;
(c) the provision of effective and appropriate means for the enforcement of trade-related intellectual property rights, taking into account differences in national legal systems;
....
Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.
Appropriate measures, provided that they are consistent with provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
1. Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delays.
1. The judicial authorities shall have the authority to order prompt and effective provisional measures:
(a) to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance;
(b) to preserve relevant evidence in regard to the alleged infringement.
2. The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed.
...
4. Where provisional measures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed.
...
6. Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer.
...
This Agreement does not give rise to obligations in respect of acts which occurred before the date of application of the Agreement for the Member in question.
The national rules
In all cases in which, having regard to the interests of the parties, an immediate provisional measure is necessary on grounds of urgency, the application may be made at a hearing which the President shall hold for that purpose on working days which he shall fix.
The dispute in the main proceedings and the questions referred
(1) Does Article 50 of TRIPs, in particular Article 50(6), have direct effect?
(2) Is Article 50(6) of TRIPs to be interpreted as meaning that provisional measures within the meaning of Article 50(1) and (2) lapse automatically by operation of law either if the substantive proceedings are not instituted within the period prescribed in the provisional measure or, where no period is prescribed, if the substantive proceedings are not commenced within 20 working days or 31 calendar days (whichever is the longer period), or is a request by the party against whom a measure has been ordered (invariably) necessary in order for that measure to lapse?
(3) Where the time-limit within which the substantive proceedings must be brought is not prescribed in the provisional measures ordered, does it commence on:
(a) the day after the date on which the court ordered the provisional measure in question; or
(b) the day after the date on which the decision ordering the provisional measure was served on the defendant; or
(c) the day after the date on which the decision ordering the provisional measure became definitive and no longer open to challenge; or
(d) at any other point in time?
(4) Where a court orders a provisional measure, must it of its own motion fix a time-limit within which substantive proceedings are to be instituted, or may it fix such a time-limit only if an application is made to that effect?
(5) Where a court is called upon in appeal proceedings to adjudicate on a measure ordered by a lower court in proceedings at first instance, and that appellate court confirms that measure, is it open to the appellate court to prescribe, either of its own motion or on application by one of the parties, a time-limit within the meaning hereinbefore referred to, if the court seised of the matter at first instance has not done so?
(6) Is Article 50 of TRIPs applicable where that agreement enters into force in the Member State concerned on a date following the closure of the trial procedure at first instance but before the court seised of the first-instance proceedings has delivered its decision?
Assessment by the Court
The regime introduced by TRIPs
The relevance, in terms of its temporal scope, of TRIPs with regard to the case before the national court (sixth question)
The direct effect of Article 50(6) of TRIPs (first question)
The need for a request to be made by the defendant in order for Article 50(6) of TRIPs to apply (second question)
The point at which time starts to run for the purposes of the time-limit referred to in Article 50(6) of TRIPs (third question)
The extent of discretion enjoyed by the judicial authorities (fourth and fifth questions)
Costs
74. The costs incurred by the French, Portuguese and United Kingdom Governments and by the Council and the Commission, which have submitted observations to the Court, are not recoverable. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court.
On those grounds,
THE COURT,
in answer to the questions referred to it by the Hoge Raad der Nederlanden by order of 5 March 1999, hereby rules:
1. Where the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPs Agreement), as set out in Annex 1 C to the Agreement establishing the World Trade Organisation, approved on behalf of the Community, as regards matters within its competence, by Council Decision 94/800/EC of 22 December 1994, became applicable in the Member State concerned at a time when the court of first instance has heard the case but not yet delivered its decision, Article 50 of the TRIPs Agreement is applicable to the extent that the infringement of intellectual property rights continues beyond the date on which the TRIPs Agreement became applicable with regard to the Community and the Member States.
2. The procedural requirements of Article 50 of the TRIPS Agreement, and in particular Article 50(6), are not such as to create rights upon which individuals may rely directly before the Community courts and the courts of the Member States. Nevertheless, where the judicial authorities are called upon to apply national rules with a view to ordering provisional measures for the protection of intellectual property rights falling within a field to which the TRIPs Agreement applies and in respect of which the Community has already legislated, they are required to do so as far as possible in the light of the wording and purpose of Article 50(6) of the TRIPs Agreement, taking account, more particularly, of all the circumstances of the case before them, so as to ensure that a balance is struck between the competing rights and obligations of the intellectual property right holder and of the defendant.
3. Article 50(6) of the TRIPs Agreement is to be interpreted as meaning that a request by the defendant is necessary in order for the provisional measures ordered by way of interim relief to lapse on the ground that no substantive action has been brought either within the period prescribed in the provisional measures or, where no period is prescribed, within 20 working days or 31 calendar days, whichever is the longer period.
4. In the absence of any provision in the TRIPs Agreement concerning the point in time at which the period of 20 working days or 31 calendar days prescribed by Article 50(6) of that agreement is to start, it is for each contracting party to determine when that period is to start, provided always that it is reasonable having regard to the circumstances of each case and taking into account the balance to be struck between the competing rights and obligations of the intellectual property right holder and of the defendant.
5. In the absence of any Community rule on the point and in accordance with Article 1(1) of the TRIPs Agreement, it is for each Member State to determine the limits of the powers of the judicial authorities in ordering provisional measures. Article 50(6) of the TRIPs Agreement neither requires nor forbids the legal order of a Member State to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted at the same time as ordering provisional measures, without any request by the defendant being necessary for that purpose.
6. Article 50(6) of the TRIPs Agreement neither requires nor forbids the Member States to provide, where appropriate, that its judicial authorities are to determine of their own motion the period within which substantive proceedings are to be instituted. Since the provision in question is silent on that point, the scope of the powers conferred on appellate courts in that regard falls within the competence of each Member State.
Rodríguez Iglesias
Wathelet
Puissochet
Schintgen
von Bahr
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Delivered in open court in Luxembourg on 13 September 2001.
R. Grass G.C. Rodríguez Iglesias
Registrar President
1: Language of the case: Dutch.