England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice Strand, London, WC2A 2LL
		20 June 2003

Mr Justice Jacob:

1. By a judgment and order of 19^th December 2001 I referred certain questions concerning the meaning of "genuine use" in Arts. 10(1) and 12(1) of the Trade Marks Directive (89/104) to the European Court of Justice for a preliminary ruling
2. By a letter of 22^nd May 2003 the Registrar of the Court of Justice inquired whether this Court wished to pursue the reference in view of the ruling of the Court of Justice in case C-40/01 Ansul. The Registrar further indicated that if the reference was not withdrawn, the Court was minded to invoke Art. 104(3) of its Rules of Procedure. Art. 104(3) applies where "the question referred is identical to the question on which the Court has already ruled, where the answer to such a question may be clearly deduced from existing case-law or where the answer to the question admits of no reasonable doubt." If the Article applies then the Court may give its decision by a reasoned order in which reference is made to its previous judgment.
3. I consulted the parties as to the course which I should take. Their joint submissions read as follows:

"Both sides are agreed that Ansul does not really answer the questions originally referred. To put the point another way, each side would no doubt interpret Ansul differently, requiring the UK Court (in the absence of any further guidance from the ECJ) to engage in a difficult exercise in trying to divine the nuances of the views of the ECJ. Ansul does not render the issues "acte claire".

Ansul does appear to provide an answer to question 5 - but that was not the central question in this reference. Ansul does not answer the central questions 2-4 (does one take the extent of use into account at all and/or is there a de minimis level and, if so, how does one judge it), nor the related question 6, nor question 7. Although Ansul answers (in part) the general question 1, the answer to question 1 remains incomplete because question 1 covers questions 2-4 in particular.

As an aside, consideration of the observations submitted to the ECJ in this reference indicates there are a range of views on the central questions 2-4. The range of views is not dispelled by the Opinion of A-G Colomer in Ansul and, we believe, is not dispelled by the Judgment.

Accordingly, both sides are agreed that the reference should not be withdrawn, although it would be possible to indicate that answers to question 5 is no longer required in the light of Ansul."

4. I agree with the parties. Save in relation to question 5 I do not think Ansul sufficiently answers the problem in this case. In particular the central questions 3 and 4 are not sufficiently addressed by the Ansul case. Putting the matter specifically Ansul does not deal with the question of whether there is a de minimis rule and, if so, what it is. Particularly what is the position when the use is tiny but has only a genuine commercial motive?
5. In the circumstances I withdraw question 5 (which is answered by Ansul) but ask the Court to rule upon the remaining questions and to do so without using the Art. 104(3) procedure.