Free Circulation of Goods : "Silhouette"

17.08.1998

Directive 89/104/EEC - Art. 7



The Oberster Gerichtshof asked two questions to the European Community Court of Justice about the interpretation of the art. 7 of the first directive 89/104/EEC (21/12/88) as modified by the European Economic Space of 02/05/92. These questions came in the case between two Austrian companies, herein referred to as Silhouette and Hartlauer. Silhouette manufactures glasses of superior class prices. It sells them in the entire world. Hartlauer sells glasses, at low prices, in Austria. It does not sell Silhouette glasses, this latter considering that it would be prejudicial to its fashioned glasses of very good quality. In October 1995, Silhouette sold old-fashioned glasses to a Bulgar society, in order to sell them in Bulgaria or in ex-Soviet Union countries, under the condition that it will not export them to other countries. Hartlauer bought these glasses and proposed them to the sale in Austria in December 1995. Silhouette instituted proceedings before the judge in chambers to the Landesgericht Steyr, in order to forbid Hartlauer the sale proposition of its marked glasses, because they have not been put up for sale on the territory of the European Economic Space, by itself or by its assent. Silhouette supports that it has not exhausted its trademark rights, because the Directive provides the exhaustion of such rights only if the products went on the market "in the European Economic Space, by the trademark titular or by its assent". Silhouette's action was rejected by the Landesgericht Steyr, and by the Oberlandesgericht Linz on appeal. Silhouette formed an appeal for reconsideration to the Oberster Gerichtshof, which asked the Court these two interlocutory questions : * Does the art. 7 §1 of the Directive oppose to national rules, that provide the exhaustion of trademark rights for products sold outside the EES under this trademark by the titular or by its assent ? The purpose of the Directive is to harmonize completely the rules relative to the trademarks rights in the EES. Thus, it does not leave to the member states the possibility to provide an exhaustion of trademark rights in their own country for products sold in countries outside the EES. But competent communotar authorities could extend this exhaustion, by the way of international treaties, to the products sold in these other countries. * Can a titular with the art. 7  §1 obtain an injunction that forbids a third to use its trademark for products sold outside the EES under this trademark, by the titular or by its assent ? In accordance to an unbroken line of precedents, a directive cannot create obligations for a particular, and thus it cannot be invoked. By applying the national law, post- or pre- directive dispositions, the national juridiction should read it in accordance to the finality of the directive.