Groene Punt
HvJ EG, 16 juli 2009, zaak C-385/07 P, Der Grüne Punkt – Duales System Deutschland GmbH tegen de Europese Commissie (Nederlandse versie nog niet beschikbaar).
Merkenrecht. Mededingingsrecht. Systeem voor inzameling en verwerking van in Duitsland in handel gebrachte verpakkingen met het (verplichte) logo van Der Grüne Punkt, mededinging, misbruik van machtspositie, licentievergoeding die verschuldigd is krachtens overeenkomst.
De centrale vraag is of Der Grüne Punkt kan eisen dat producenten en verkopers een licentievergoeding moeten betalen voor alle verpakkingen waarop dit logo is aangebracht, ook al wordt een deel van deze verpakkingen niet via het systeem van Der Grüne Punkt, maar via een concurrerend systeem teruggenomen. De commissie oordeelde bij besluit van niet en het GvEA verwiep het beroep van DSD. Het Hof concludeert dat ook de hogere voorziening moet worden afgewezen. De merkenrechtelijke overwegingen:
Trdae Mark Agreement. 87. (…) the object of the Trade Mark Agreement is to allow DSD’s contractual partners to be relieved of their obligation to collect and recover packaging which they notify to DSD. The agreement provides that undertakings participating in the DSD system must affix the DGP logo to all packaging notified to DSD and intended for domestic consumption in Germany.
88. It follows that the Trade Mark Agreement which DSD’s customers entered into concerns the affixing of the DGP logo to all packaging notified to DSD and intended for domestic consumption in Germany.
89. As is apparent, in particular, from Article 1 of the decision at issue, the abuse of a dominant position established by the Commission arises from the fact that the Trade Mark Agreement requires DSD’s customers to pay a fee in respect of all packaging notified to DSD, even where it is proved that some of it has been taken back and recovered through competing exemption systems or self-management solutions.
90. It is clear that the Court of First Instance did not distort that part of the evidence on the file.
91. Thus, at paragraph 141 of the judgment under appeal, the Court of First Instance correctly stated that ‘only the provisions of the Trade Mark Agreement concerning the fee are regarded as abusive in [the decision at issue] [and], thus, [the decision at issue] does not criticise the fact that … the [Trade Mark Agreement] requires the manufacturer or distributor wishing to use the DSD system to affix the [DGP logo] to each piece of notified packaging which is intended for domestic consumption’.
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Gestelde inbreuk gemeenschapsmerk: 124 It must be held, first of all, that Vfw’s argument that the DGP logo is not truly a trade mark cannot be accepted. It is not disputed that the logo has been registered as a trade mark by the German Patents and Trade Marks Office in relation to waste collection, sorting and recovery services.
125. As regards, next, the alleged failure by the Court of First Instance to have regard to Article 5 of Directive 89/104, it must be noted that, by virtue of Article 5(1)(a), a registered trade mark confers on the proprietor exclusive rights therein, entitling the proprietor to prevent all third parties not having his consent from using in the course of trade any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.
126. It follows that, by claiming that at paragraph 161 of the judgment under appeal the Court of First Instance failed to have regard to the exclusive right to the use of the logo of which it is the proprietor and by invoking Article 5 of Directive 89/104 in that context, DSD is arguing that the Court of First Instance should have held that the decision at issue had unlawfully stopped it preventing third parties from using a sign which was identical with its logo. DSD placed considerable emphasis on this argument at the hearing and claimed that the result of the obligations laid down by the decision at issue and of their approval by the Court of First Instance is that the DGP logo has, in practice, become available to be used by all.
127. In order to respond to that line of argument, it is necessary to draw a distinction between the use of the DGP logo by DSD’s contractual partners and the possible use of that logo by other third parties.
128. As regards the use of the DGP logo by DSD’s contractual partners, it is apparent from the wording itself of Article 5 of Directive 89/104 that that provision does not cover circumstances in which a third party uses a trade mark with the consent of its proprietor. That is the case, in particular, where the proprietor has authorised its contractual partners to use its mark under the terms of a licence agreement.
129. It follows that DSD cannot validly rely on the exclusive right conferred on it by the DGP logo as regards the use of that logo by manufacturers and distributors who have entered into the Trade Mark Agreement with it. It is true that Article 8(2) of Directive 89/104 provides that a proprietor of a trade mark may invoke the rights conferred by that mark against a licensee who contravenes any of the terms in his licensing contract referred to in that provision. However, as the Advocate General stated at point 192 of his Opinion, in the present case, DSD itself set up a system which requires that the DGP logo be affixed to all packaging, even where some of the packaging is not taken back by the system. It is accordingly a matter of agreement between the parties that the use of the DGP logo on all packaging notified to DSD is required by the Trade Mark Agreement and is therefore compatible with it.
130. In so far as DSD argues that the measures imposed by the Commission have the effect that the use of the DGP logo by its licensees is, in part, to be free of charge, suffice it to note that the sole object and sole effect of the decision at issue is to prevent DSD from receiving payment for collection and recovery services where it is proved that they have not been provided by that company. Such measures are not incompatible with the rules laid down by Directive 89/104.
131. Furthermore, as the Court of First Instance correctly held at paragraph 194 of the judgment under appeal, the possibility cannot be ruled out that the affixing of the DGP logo to packaging, whether part of the DSD system or not, may have a price which, even if it cannot represent the actual price of the collection and recovery service, should be able to be paid to DSD in consideration for the use of the mark alone.
132. As regards the possible use of the DGP logo by third parties other than DSD’s contractual partners, neither the decision at issue nor the judgment under appeal state that such use would be permitted under trade mark law. In that regard, the Court of First Instance correctly found at paragraph 180 of the judgment under appeal that the obligations laid down by the decision at issue concerned only relations between DSD and ‘manufacturers and distributors of packaging which are either contractual partners of DSD in the context of the Trade Mark Agreement …, or holders of a licence to use the [DGP] mark in another Member State in the context of a take-back and recovery system using the logo corresponding to that mark …’.
133. Therefore, any use of the DGP logo by third parties other than DSD’s contractual partners is not a matter for which either the Commission or the Court of First Instance bear any responsibility. Moreover, there is nothing to prevent DSD from bringing proceedings against such third parties before the national courts having jurisdiction in that regard.
134. It follows from all of the above considerations that the fourth plea in law must also be rejected.
Lees het arrest hier.
