Jean Monnet Center at NYU School of Law


2. The Debatable Jurisdiction Of The Court

The analysis undertaken by the Court of its competence and the subsequent result attained give rise to a possible critique, relating to both the grounds for the admissibility of the reference in Case C-300/98, and the ability for the Court to give a preliminary ruling in Case C-392/98, considering that the Court held that the reference concerned measures adopted for the protection of intellectual property rights in a field in which the Community had not yet legislated and which "do[es] not fall within the scope of Community law".20

(a) Admissibility Of The Reference Under Article 234

Preliminary rulings to the ECJ are governed by Article 234 EC, which states: "[t]he Court of Justice shall have jurisdiction to give preliminary rulings concerning: (a) the interpretation of this Treaty; (b) the validity and interpretation of acts of the institutions of the Community [...]. Where such a question is raised before any court or tribunal of a Member State, that Court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court of Justice to give a ruling thereon. Where any such question is raised in a case pending before a court or tribunal of a Member State against whose decisions there is no judicial remedy under national law, that court or tribunal shall bring the matter before the Court of Justice."21 Article 234 has been supplemented by numerous cases of the Court.22

(i) Arguments of the Court

The issue of admissibility of the reference under Article 234 was brought up directly in Case C-300/98 (Parfums Dior). The sole question referred by the District Court was whether Article 50(6) of TRIPs was to be construed as having direct effect. The Council and the Commission, supported by the Netherlands Government, argued that the reference was inadmissible, on the ground that the order for reference did not indicate why an answer to the question submitted was necessary in order to enable the referring court to give judgment.23 Advocate General Cosmas lent his support to this argument, underlying that the main proceedings, even if related to trade marks, presented no link with the questions of interpretation and direct effect of Article 50(6) of TRIPs: it was not apparent from the reference that the issue of the time-period during which the defendant can ask for the suppression of the interim measures granted would arise. Moreover, he pointed out that the question had been referred by the District Court to the ECJ on its own motion, without request or comment from the parties. Finally, he mentioned that the interim measure action had already been substantially ruled upon and that the decision was provisionally enforceable, even if the costs would be ruled upon with the formal announcement of the decision. Hence he did not see if and how an answer to the reference could help the national court to give judgment.24

The Advocate General concluded that the Court was deprived of all the factual and legal elements of the case that were necessary for the Court to be able to provide a useful answer to this reference. He relied on both Corsica Ferries,25 where the Court held that "it [had] no jurisdiction to rule on questions submitted by a national court if those questions bear no relation to the facts or the subject-matter of the main action and hence are not objectively required in order to settle the dispute in that action",26 as well as Sunino and Data,27 where the Court held that "in order to reach an interpretation of Community law which will be of use to the national court, it is essential that the national court define the factual and legislative context of the questions it is asking or, at the very least, explain the factual circumstances on which those questions are based".28

Notwithstanding the well-argued opinion of the Advocate General, the Court disposed of the matter quite summarily. It deduced from the fact that Article 50(6) of TRIPs imposes limits on the life-time of interim measures and that no such limit appears in national law that the question referred by the Dutch Court was designed to ascertain whether it was required to comply with the time-limits imposed by Article 50(6) of TRIPs. The Court further observed that the question referred in Case C-300/98 "[was] in essence identical to the second question in Case C-392/98, whose admissibility [was] not disputed", to conclude that "[i]n those circumstances, the questions submitted in both cases should be answered".29

(ii) Comments

The brevity of reasoning by the Court provokes queries as to why a more developed and maybe more convincing line of reasoning was not developed. The significance of the question referred, as well as the collective opposition of all the others actors involved in the proceedings - the Council, the Commission, the Dutch Government, and the Advocate General - maybe should have forced the Court to better defend its position in favor of the admissibility of the reference. It had enough case-law at its disposal to easily develop a still concise but more persuasive argumentation, for instance by relying expressly on its previous case-law.

Still, in the Court's favor, it can first be acknowledged that the opinion of the Advocate General did not lead to a compelling result either. Even if it is assumed that Cosmas had convincingly referred to the case-law supporting the necessity for the Court to have some knowledge of the legal context surrounding the reference and the factual circumstances of the main proceedings, his argument relating to the absence of request of, or prior observations on, the reference on the part of the parties30 cannot be accepted. It is settled case-law that "the fact that the parties to the main action failed to raise a point of Community law before the national court does not preclude the latter from bringing the matter before the Court of Justice. In providing that [a] reference for a preliminary ruling may be submitted to the Court where `a question is raised before any Court or tribunal of a Member State', the second and third paragraphs of Article [234] of the Treaty are not intended to restrict this procedure exclusively to cases where one or [the] other of the parties to the main action has taken the initiative of raising a point concerning the interpretation or the validity of Community law, but also extend to cases where a question of this kind is raised by the national court or tribunal itself which considers that a decision thereon by the Court of Justice is `necessary to enable it to give judgment'."31 It is also part of the jurisprudence constante of the ECJ that "it is solely for the national court before which the dispute has been brought, and which must assume the responsibility for the subsequent judicial decision, to determine in light of the particular circumstances of the case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the question which it submits to the Court".32

Hence, Cosmas seems to have overlooked the basic principle governing preliminary references i.e. the prevailing discretion of the national court to refer a question.33 Had he started from this principle, instead of starting with the limitations put by the Court on the principle, his opinion might have been more persuasive and even might have encouraged the Court to more thoroughly justify its admissibility ruling, by referring explicitly to its relevant case-law.

The reasoning of the Court is also undermined due to its reliance on a confusing argument: the similarity of the questions referred in both cases.34 This element can difficultly be considered as convincing or even as providing any useful help to a conclusion towards establishing the permissibility of the reference. On the contrary, it seems more persuasive to hold that if the question referred in one case is "in essence identical" to the question referred in a joined case whose admissibility is a priori not disputed, this question will be answered in any event. In such circumstances, a ruling of inadmissibility of the first reference will not be detrimental to the referring court, since it will have an answer to its reference and since national courts are, in principle, bound by the interpretation given by the Court in a previous case.35 Hence, such an argument better favors the inadmissibility of the reference.

In any event, the ruling of the Court on the admissibility of the reference might be welcomed, but the importance of the reference and the negative position of the other actors involved in the proceedings deserved a better and higher quality response of the Court. On a broader level, a more thorough development of its reasoning would have helped to reinforce the weight of this precedent, and maybe prevent further criticisms that could be addressed to this ruling. Had the Court asserted its jurisdiction with greater reason, its response to the question of direct effect might have seen more appropriate. This part of the ruling leaves the impression that the Court was keen to express its unambiguous position as regards the question of direct effect of TRIPs.

The extreme willingness of the Court to answer the reference can also be seen from its holding relating to its jurisdiction to interpret Article 50(6) of TRIPs, which can be perceived as the "flip side of the coin."

(b) Jurisdiction of the Court to interpret Article 50 of TRIPs

From its express wording, Article 234 appears to be the way for national courts to refer questions of Community law to the ECJ. Here, the references concerned the direct effect of Article 50(6) of TRIPs (in both cases), the jurisdiction of the Court to interpret Article 50 of TRIPs and the notion of intellectual property right under Article 50(1) of TRIPs (in case C-392/98). The possibility for the Court to answer the references implies that Article 50 of TRIPs is in some respect already part of Community law. We shall see that the answer that was given was not as obvious as the Court seems to have considered.

(i) The Judgment of the Court

A question on the interpretation of Article 50 of TRIPs had already been submitted to the ECJ in Hermès.36 However, it only partially resolved the issue of the jurisdiction of the Court to interpret provisions of TRIPs. In Hermès, the District Court of Amsterdam referred for a preliminary ruling to the ECJ a question on the interpretation of the notion of "provisional measure" within the meaning of Article 50 of TRIPs, in the context of an action introduced by Hermès against FHT to protect its copyright and trade mark.37 The ECJ recalled that the WTO Agreements were concluded by both the Community and the Member States, without allocation of their respective obligations towards the other contracting parties. It recognized that the provisional measures envisaged by Article 50 of TRIPs are those provided for by the domestic law of the Member State concerned. It also noticed that a pre-existing Regulation on a Community trade mark38 similarly provides for the adoption of provisional measures - also to be provided for by the domestic law of the Member States. The Court then referred to Poulsen, 39 which held that the Community must respect international law in the exercise of its powers and that consequently Community legislation must be interpreted in the light of the relevant rules of international law.40 It applied this rationale by analogy to the reference in Hermès: since the Community is a party to TRIPs, that TRIPs applies to the Community trade mark, and as it is assumed that Community legislation respects the international obligations of the Community as embedded in TRIPs, the national courts referred to in the Regulation, when called upon to apply national rules for ordering provisional measures for the protection of rights arising under a Community trade mark, are required to apply these national rules "as far as possible in the light of the wording and purpose of Article 50" of TRIPs.

The Court concluded that it had "in any event, jurisdiction to interpret Article 50". It was of no consequence that the main proceedings related to a Benelux rather than a Community trade mark: it had already been previously established that where a provision can apply both to situations falling within the scope of national law and concurrently to situations within the scope of Community law, it is in the Community interest, to forestall future differences of interpretation, that that provision should be interpreted uniformly, whatever the circumstances in which it is to apply.41 As Article 50 of TRIPs applies to the Community trade mark as well as to national trade marks, the Court concluded it had jurisdiction to rule on the question submitted.42

In Parfums Dior, the Court relied on Hermès to ascertain its jurisdiction to rule on the references. The Court quoted its reasoning, mentioned above, on the jurisdiction of the Court to interpret Article 50 of TRIPs.43 The ECJ then referred to the obligation of close cooperation existing between the Member States and the Community institutions in the fulfillment of the commitments undertaken under joint competence.44 It took the position that Article 50 of TRIPs "constitutes a procedural provision which should be applied in the same way in every situation falling within its scope." Since it "is capable of applying both to situations covered by national law and to situations covered by Community law", it "requires the judicial bodies of the Member States and the Community, for practical and legal reasons, to give it a uniform interpretation".45 As only the ECJ in the context of Article 234 is in a position to ensure such uniform interpretation, the Court concluded that its jurisdiction to interpret Article 50 of TRIPs is not restricted solely to situations covered by trade mark law.46

(ii) Comments

Although uncontroversial on its face, the reasoning of the Court is nevertheless not safe from critiques. The candid extension of the Hermès thinking, "for practical and legal reasons", might in fact produce major consequences, of which it is not certain that the Court was well aware.

It is true that the position of the Court was totally justified as far as Case C-300/98 is concerned, the main proceedings relating to an action for the protection of a trademark, i.e. the same factual context as in Hermès. However, the issue was more problematic as far as Case C-392/98 was concerned. The main proceedings involved an action against the wrongful copying of an industrial design, which is a field in respect of which the Community has not yet exercised its competence and which thereby remains under the competence of the Member States.47 The opinion of Advocate General Cosmas demonstrates that it did not go without saying that the Court had jurisdiction to answer this reference.

a. `Problematization' of the Question by the Advocate General

Cosmas analyzed the issue by looking at whether the Court can recognize its jurisdiction to interpret provisions of multilateral international agreements, such as TRIPs, when these provisions apply to fields in which the Community has not yet exercised its competence.48 He concluded from Opinion 1/94 that the Community competences in the field of TRIPs are still only potential for the Community, and actual for the Member States. As the main proceedings in Case C-392/98 involved an action in an area in which the Community has not yet exercised its competence, he concluded that, under these circumstances, the Community cannot be considered a party to TRIPs.49 Thus, the question of the jurisdiction of the Court becomes much more sensitive, especially since no element of Community law seems to be affected by the interpretation of Article 50 of TRIPs in the present case.50

Cosmas then undertook a rapid overview of the pre-existing case-law of the Court on the interpretation of mixed agreements and concluded that the case-law relating to association agreements cannot be a decisive basis for a general theory on the jurisdiction of the Court to interpret provisions of international agreements.51 Similarly, the reasoning of the Court in Hermès did not allow the conclusion that the Court had recognized for itself an "unlimited competence" to interpret Article 50 of TRIPs.

He thus proceeded to analyze ab initio the question of the Court's jurisdiction in a context such as the one of the reference. He considered "three fundamental issues" raised by the possible jurisdiction of the Court in this case: the institutional balance between Community institutions and national authorities; the institutional balance between the Court and the other Community institutions; and the problem of uniform interpretation of TRIPs.

He held the issue of the institutional balance between Community and national authorities was not dispositive. On the issue of the institutional balance between the Court and the other Community institutions, Cosmas referred to Opinion 1/94 on the necessity not to circumvent internal procedural rules relating to harmonization by adopting an international agreement.52 He interpreted that decision as having for consequence that the Court should not grant to itself what it refused to the other Community institutions. By recognizing its jurisdiction to interpret a provision of TRIPs in a field in respect of which the Community has not yet legislated, the Court would determine a binding framework within which the future harmonization of intellectual property rights will have to take place.53 Since this interpretation would, by definition, take place before any legislative action has been entered into, it would constrain or even initiate the harmonization process and thereby circumvent the procedural rules specifically laid out in the Treaty, contrary to Opinion 1/94.

The Advocate General then moved to the nexus of his argumentation: the issue of uniform interpretation of TRIPs. After having recalled some of the elements arguing in favor of the recognition of a general jurisdiction of the Court to interpret TRIPs,54 he considered them to result from a simplistic approach to the question.55

He argued in favor of a restriction on the interpretative jurisdiction of the Court, so as to conclude that the Court has no competence to answer the questions referred to it by the Dutch Court in Case C-392/98. His main arguments were that there is no absolute necessity for the uniform application of international agreements within the Community, particularly since the nature of the WTO Agreements does not justify consistent interpretation and application as is the case for Community law,56 and that in any event the Court is not in the appropriate position to guarantee the "unity of international representation of the Community" vis-à-vis the other Contracting Parties to the WTO Agreements, since a ruling of the Court would not be sufficient to guarantee the coordination of a common action of the Community.57

b. Position taken by the Court

Once again, it seems that the Advocate General was much more aware of the complexity of the question at stake than the Court, which, maybe willingly, relied on what may be considered to be obscure "practical and legal reasons" to give a uniform interpretation of Article 50 of TRIPs irrespective of its factual context.58 We will nevertheless try to determine what these reasons may be, and whether they could lead to any future evolution of the case-law of the Court.

Practical Elements underpinning the Reasoning of the Court

Several elements may be referred to as "practical" reasons that led the Court to recognize its jurisdiction.

First of all, Advocate General Cosmas seems to be mistaken when he tried to make a distinction between Article 50 of TRIPs depending on whether it is to be applied in a national or in a Community context. The consequence would be that the interpretation of a provision of TRIPs would vary depending on who would be responsible for its application, i.e. the Member States or the Community institutions. However, whatever the context, it remains one and the same provision, and the approach defended by Cosmas seems unworkable in practice. Even if it is true that the difficulties of "line-drawing" between Community and Member States competences are not sufficient to ground the jurisdiction of the Court,59 they represent an impracticality that cannot be ignored. Furthermore, as the notion of joint competences can best be understood from a dynamic perspective, such that the scope of Community competence can be broadened by expanding Community legislation,60 the institutions which would have to be considered competent to interpret a given provision of TRIPs would vary, both depending on the context in which this provision is to be applied - national or Community law - and on whether Community institutions preempted a new field of intellectual property rights. Such an attitude, which might lead to divergent interpretations over-time could difficultly be justified vis-à-vis the other Contracting Parties to TRIPs.61

Secondly, there might be a cost to diverging interpretations, and a corresponding benefit from a centralized interpretation: it is preferable from a Community perspective that a dispute procedure started in the framework of the WTO, is directed against an interpretation of a provision by the ECJ rather than by a national court, in order to avoid the fragmentation of the legal obligations of the Member States.62 Further, it is also plausible that the ECJ is to be preferred to any other Community institution in order to interpret the provisions of TRIPs, even in fields in respect of which the Community has not yet legislated, since the mechanism of Article 234 is available and appropriate for such a purpose. The present case perfectly illustrates this point. Also, it seems that any mechanism whereby another institution would be required to give an interpretation would eventually be answerable to the ECJ, e.g. pursuant to an action under Article 230 EC.63

Thirdly, the Court might have recognized its jurisdiction by a desire to promulgate "standards for the rest of the world". A common attitude of countries with advanced economies within the EU towards the provisions of TRIPs could make it more difficult for countries with a lower level of intellectual property rights protection to justify their own, and potentially conflicting, interpretations of the Agreement.64

Finally, the future developments of EU law might represent a fourth practical reason justifying the extension of the scope of Article 234 further than had already been done by Hermès. The Treaty of Nice65 made use of the provision of Article 133 EC paragraph 5, which envisaged, since the entry into force of the Treaty of Amsterdam, the possibility to extend the scope of Article 133 EC on common commercial policy, falling under the exclusive competence of the Community, to "international negotiations and agreements on [...] intellectual property".66 While it is true that the Treaty of Nice was signed only on 26 February 2001, the process of amending the Treaty undertaken at Nice was considered as an example of transparency, as an overview of the evolution of the negotiations and draft versions of the Treaty were available on the Internet, already before the judgment was rendered.67 The IGC being an event of constitutional importance for the Community, it is logical to imagine that the Court kept itself informed of the evolutions of the negotiations. It might have been aware that TRIPs would eventually, once the Treaty of Nice would have been ratified and entered into force, be part of the common commercial policy and fall under the exclusive competence of the Community. Then, the Court would for sure have jurisdiction to interpret the provisions of TRIPs. In light of these future developments, the Court might have wish to take the initiative of a centralized interpretation ab initio, in order to avoid future difficulties, such as the necessity to reconcile pre-existing divergent national positions.

Legal Reasons Underpinning the Reasoning of the Court

Several legal elements can also be identified as having led the Court to recognize its jurisdiction over the interpretation of Article 50 of TRIPs.

Firstly, the Court relied on what has been called "the Dzodzi line of cases",68 which originated from the Court's recognition of its jurisdiction to interpret what appeared formally to be a rule of national law but indeed was a rule of Community law rendered voluntarily applicable in national law by the Member States, or where a national rule assimilated the situation of own nationals otherwise not benefiting from the Community rules to the situation governed by Community law.69 The Court took the position that it "has jurisdiction to give preliminary rulings on questions concerning Community provisions in situations where the facts of the cases being considered by the national courts [are] outside the scope of Community law but where those provisions had been rendered applicable ... by domestic law..."70

This argumentation had already been subject to opposition when it was used in Hermès. It was said that the Court based its jurisdiction on an "implausible and over-broad ground",71 using a jurisprudence allowing it to give a preliminary ruling whenever the interpretation of a legal norm is of possible relevance to EC law.72

The critique is understandable, since TRIPs does not reproduce any Community law provision,73 and has even more force in the case at issue. First of all, a simple assimilation of the Hermès reasoning to the Parfums Dior situation should not have been done so lightly, especially if we remember that the factual context of Case C-392/98 was slightly different than in Hermès.74 Secondly because in `Dzodzi type of reasoning', the uniformity of interpretation seems to have been required by definition, whereas in the case of TRIPs, uniform interpretation by the Contracting Parties is only an aspiration, and not the starting point of the reasoning. Moreover, in the Dzodzi hypotheses, the jurisdiction of the Court to interpret the provisions of Community law to which national law referred was certain, whereas in the present case the question of the jurisdiction of the Court to interpret TRIPs should not be considered as an established fact. Finally, Dzodzi and its progeny relied on the prerequisite that the provisions at stake could be applied to situations falling under both Community and national law, whereas in Case C-392/98 there was no exercised competence of the Community relating to the subject-matter of that case.75 Thus, even if the existence of the Dzodzi precedent has been considered by the Court as being of consequence for its decision regarding its jurisdiction,76 it can be argued that it is far from being the most legally convincing argument.

Another legal reason that might have led the Court to extend its jurisdiction is the putting into practice of the obligation of cooperation between the Member States and the Community institutions, which it laid down in Opinion 1/94.77 The Court might have been echoing the lengthy explanations given by the Advocate General on how this cooperation should take place.78 The obligation of cooperation has been said to result from the requirement of unity in the international representation of the Community and the need to ensure the consistency of the Community's external action.79 By accepting its interpretative jurisdiction in the present case, the Court might be wishing to extend the position it took in Opinion 1/94, which has been argued "not [to] provide any leverage to individual Member States at the WTO level",80 in order to reinforce the appearance of the Community as a unique party to the Agreements. If the ECJ is to have jurisdiction over the interpretation of TRIPs provision, it is another element weakening the individual position of a Member State in the WTO, and thus at the same time reinforces the international standing of the Community.

Finally, the attitude of the Court can be illuminated by the evolution of the case-law since the origins. As Arnull has noted, a possibility might present itself where the Court is faced with a case "with which it seems to have no specific power to entertain but where, if it declines jurisdiction, there is a real risk that the law will not be observed in the interpretation and application of the Treaties".81 In the present case, the Court might have sought to avoid denying its jurisdiction, in order to prevent future conflicting interpretations of the TRIPs provisions, for which the Community might ultimately be held responsible, and as a result of which the law would not be observed. This would be an illustration of the idea that Article 220 EC, which provides that the Court shall ensure that in the interpretation and application of the Treaty the law is observed, impose[s] upon the Court an "overriding duty to ensure that "the law is observed" in particular cases, notwithstanding the absence of provisions expressly granting it jurisdiction to do so",82 the law is such a context being the TRIPs Agreement.

c. Prospects deriving from the Reasoning of the Court

The use of these legal and practical reasons not only serves as a ground for the reasoning of the Court, but also seems to help clarifying certain uncertainties that existed previously regarding the notion of joint competences. They might also be indicia of the coming of a new dawn in the case-law of the ECJ as regards Article 234.

First, the Court's recognition of jurisdiction provides a useful element to help resolve the uncertainties that existed among scholars on the notion of joint competences of the Member States and Community institutions, as established by Opinion 1/94, as regards inter alia TRIPs. The holding of the Court relating to the joint competence for the conclusion of the WTO Agreements has been criticized for being "not totally consistent..." and ambiguous,83 some parts of the opinion even being considered "legally unsound",84 maybe because it had been inspired by political rather than legal considerations.85 Drexl tried to solve the inconsistencies of Opinion 1/94 by a dynamic understanding of the rules of competence: the scope of exclusive Community competence can be broadened by introducing secondary legislation that completely harmonizes particular intellectual property regimes; meanwhile, the Member States remain competent, but this last part is not a domaine réservé because it may be narrowed by subsequent Community legislation.86 Parfums Dior seems to confirm this approach: as the competence of the Member States over TRIPs could be preempted by the Community at any time, a uniform interpretation of its provisions from the origin is to be welcomed, for all the legal and practical reasons stated above.

More interestingly, it seems that the position adopted by the Court might evolve towards a general obligation for all national courts faced with a question of interpretation of a TRIPs provision to refer it to the ECJ, whether they are to be considered as courts of last instance or not; and even if the wording of Article 234 requires only the courts against whose decisions there is no judicial remedy under national law to refer questions of inter alia interpretation of Community law to the ECJ. The existing case-law already obliged all courts to refer questions relating to the validity of Community acts to the ECJ.87 A `new dawn' or parallel evolution as regards the interpretation of TRIPs provisions could well be envisaged, since the line of reasoning used by the Court - the "practical and legal reasons" - appears broad enough to encompass whatever national court is ruling, whether its decisions are subject to appeal or whether they are final, and no matter which provision of TRIPs is under study.88,89

After having admitted its jurisdiction to answer the reference, the Court logically proceeded to answer the first question referred, notably "whether Article 50(6) of TRIPs has direct effect".90

20 Parfums Dior, supra note 2 at para. 48.

21 Treaty establishing the European Community, Consolidated version, as modified by the Treaty of Amsterdam, available at

22 For a general overview of preliminary rulings in the European Union, see Anthony Arnull, References to the European Court, [1990] E.L.Rev. 15(5), 375; Denys Simon, Le système juridique communautaire, [1998] 2nd edition, PUF Collection Droit Fondamental - Droit International, pp. 487-524; Stephen Weatherhill and Paul Beaumont, EU Law, [1999] 3rd edition, Penguin Books, pp. 314-356; Paul Craig and Gráinne de Búrca, EU Law - Text, Cases and Materials, [1998] 2nd edition, Oxford University Press, pp. 406-452.

23 Parfums Dior, supra note 2 at para. 29. See also Opinion of Advocate General Cosmas of 11 July 2000 on Joined Cases C-300 and C-392/98, not yet reported, available in French at, at para. 28.

24 Opinion of Advocate General Cosmas, supra note 23 at 28-29.

25 Judgment of the Court of 17 May 1994, Corsica Ferries Italia Srl v Corpo dei Piloti del Porto di Genova, Case C-18/93, [1994] ECR I-1783.

26 At para. 14.

27 Order of the Court of 20 March 1996, Criminal proceedings against Carlo Sunino and Giancarlo Data, Case C-2/96, [1996] ECR I-1543.

28 At para. 4.

29 Parfums Dior, supra note 2 at para. 30-31.

30 Opinion of Advocate General Cosmas, supra note 23 at para.29.

31 Judgment of the Court of 16 June 1981, Maria Salonia v Giorgio Poidomani and Franca Baglieri, nee Giglio, Case 126/80, [1981] ECR 1563 at para. 7. Similarly, Judgment of the Court of 6 October 1982, Srl CILFIT and Lanificio di Gavardo SpA v Ministry of Health, Case 283/81, [1982] ECR 3415 at para. 9, where the Court holds that "a national court or tribunal may ... refer a matter to the Court of Justice of its own motion".

32 Judgment of the Court of 15 December 1995, Union royale belge des sociétés de football Association ASBL v Jean-Marc Bosman, Royal Club Liégeois AS v Jean-Marc Bosman and others and Union des associations européennes de football (UEFA) v Jean-Marc Bosman, [1995] ECR I-4921, at para. 59. Similarly, Judgment of the Court of 16 November 1995, Criminal proceedings v Geert Van Buynder, Case C-152/94, [1995] ECR I-3981, at para. 9, holding that "in proceedings under Article [234] of the Treaty, [the ECJ] may not ... assess whether questions referred to it by a national court are relevant". See also the numerous references to similar statements of the Court in Stephen Weatherhill and Paul Beaumont, EU Law, supra note 22 at 326, note 60.

33 The term "discretion" itself is used by the Court. See Judgment of the Court of 10 March 1981, Irish Creamery Milk Suppliers Association and others v Government of Ireland and others; Martin Doyle and others v An Taoiseach and others, Joined Cases 36 and 71/80, [1981] ECR 735 at para. 7.

34 Parfums Dior, supra note 2 at para. 30.

35 Judgment of the Court of 27 March 1963, Da Costa en Schaake NV, Jacob Meijer NV, Hoechst-Holland NV v Netherlands Inland Revenue Administration, Joined Cases 28-30/62, [1963] ECR 31 at para. 3.

36 Supra, note 15.

37 Hermès at para. 12-21.

38 Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark, [1994] OJ L 1/1, as amended by Council Regulation 3288/94/EC of 22 December 1994, for the implementation of the agreements concluded in the framework of the Uruguay Round, [1994]OJ L 349/83.

39 Judgment of the Court of 24 November 1992, Anklagemyndigheden v Peter Michael Poulsen and Diva Navigation Corp., Case C-286/90, [1992] ECR I-6019.

40 At para. 9.

41 Hermès, supra note 15 at para. 32, referring inter alia to Judgment of the Court of 17 July 1997, A. Leur-Bloem v Inspecteur der Belastingdienst/Ondernemingen Amsterdam 2, Case C-28/95, [1997] ECR I-4161 at para. 34.

42 Hermès, supra note 15 at para. 32-33.

43 Parfums Dior, supra note 2 at para. 33-35.

44 Id. at para. 36, referring to Opinion 1/94, supra note 18 at para.106-109.

45 Parfums Dior, supra note 2 at para. 37.

46 Id. at para. 40.

47 Opinion of Advocate General Cosmas, supra note 23 at para. 33.

48 Id. at para. 31.

49 Id. at para. 33.

50 Id. at para. 35-36.

51 Opinion of Advocate General Cosmas, supra note 23 at para. 38. Concurring in essence, see Opinion of Advocate General Darmon of 19 May 1987 in Case 12/86, Meryem Demirel v Stadt Schwabisch Gmund, Case 12/86, [1987] ECR 3719; and Opinion of Advocate General Tesauro of 13 November 1997, in Case C-53/96, Hermès, supra note 15, both referred to by Cosmas. See also e.g. Frédérique Berrod, La Cour de Justice refuse l'invocabilité des accords OMC: essai de régulation de la mondialisation - A propos de l'arrêt de la Cour de Justice du 23 novembre 1999, Portugal c/ Conseil,(accords textiles avec le Pakistan et l'Inde), [2000] R.T.D.Eur. 36(3) 419, at 429, on the specificity of WTO Agreements.

52 Opinion of Advocate General Cosmas, supra note 23 at para. 46-51. See also Opinion 1/94, supra note 18.

53 Opinion of Advocate General Cosmas, supra note 23 at para. 47-48.

54 Such as the difficulty which can arise when it has to be determined precisely whether a provision falls under Community law or only under national competence; the impracticality of interpreting the same provision on provisional measures differently depending on which substantial intellectual property right is at stake; the fact that for the other Contracting Parties to TRIPs the Community and its Member States represent a "unique entity" and that the Community is liable vis-à-vis third parties for all violations of the provisions, whoever infringes the Agreement; see Opinion of Advocate General Cosmas, supra note 23 at para. 53-55.

55 Id. at para. 56.

56 Id. at para. 61.

57 Id. at para. 65-68.

58 Parfums Dior, supra note 2 at para. 37.

59 Opinion of Advocate General Cosmas, supra note 23 at para. 59.

60 Josef Drexl, supra note 19 at 31-36, esp. 35.

61 Similarly, see Opinion of Advocate General Jacobs of 15 February 2001, Pending Case C-89/99, V.O.F. Schieving-Nijstad and others v Robert Groeneveld, available at, who acknowledges at para. 40 that "it would be too cumbersome to have two distinct legal regimes, one governing the Community trade mark and the other governing national trade marks."

62 Armin von Bogdandy, Case note on Hermès, [1999] C.M.L.Rev. (36) 663, at 668.

63 Article 230 EC provides generally that the Court of Justice shall review the legality of the acts of the institutions. For further details, see e.g. Paul Craig and Gráinne de Búrca, supra note 22 at 453-489.

64 Armin von Bogdandy, supra note 62 at 668.

65 Treaty of Nice amending the Treaty on European Union, the Treaties Establishing the European Communities and Certain Related Acts, [2001] OJ C 80/1, not yet entered into force.

66 See Treaty of Nice, Article 2 para.8, amending Article 133 EC as amended by the Treaty of Amsterdam.

67 Xenophon A. Yataganas, The Treaty of Nice, The Sharing of Power and the Institutional Balance in the European Union - A Continental Perspective, Jean Monnet Working Paper 01/01, available at

68 Expression of Saulius Lukas Kaleda, Extension of the preliminary rulings procedure outside the scope of Community law: `The Dzodzi line of cases', [2000] EioP 11(4), at, who classifies at such Case 166/84 Thomasdünger v Oberfinanzdirektion Frankfurt am Main, [1985] ECR 3001; Joined Cases C-297/88 and C-197/89 Dzodzi v Belgian State, [1990] ECR I-3763; Case C-231/89 Gmurzynska-Bscher v Oberfinanzdirektion Köln, [1990] ECR I-4003; Case C-384/89 Tomatis and Fulchiron, [1991] ECR I-127; Case C-73/89 Fournier v Van Werven, [1992] ECR I-5621; Case C-88/91 Federconsorzi, [1992] ECR I-4035; Case C-28/95 Leur-Bloem, [1997] ECR I-4161; Case C-130/95 Giloy, [1997] ECR I-4291; Case C-247/97 Schoonbrodt, [1998] ECR I-8112.

69 Id. at Annex 1, The Nature of reference in `the Dzodzi line of cases'.

70 Leur-Bloem, supra note 41 at para. 27.

71 Steve Peers, Constitutional Principles and International Trade, [1999] E. L. Rev. 24(2) 185, 191.

72 Armin von Bogdandy, supra note 62 at 666; Steve Peers, supra note 71 at 191, arguing that the ECJ grounded its jurisdiction in Hermès on the argument that "all national measures which fall within the scope of Community law must be interpreted in the light of the Community's international obligations, even when the national measures do not implement or affect Community law".

73 Saulius Lukas Kaleda, supra note 68 at Annex 7, Relevance of `the Dzodzi principle' to the interpretation of `mixed' international agreements.

74 The main proceedings in Hermès related to the protection of a trade mark, field in respect of which the Community had already exercised its competence. The main proceedings in Layher related to the protection of an industrial design, field not yet covered by Community legislation.

75 For all these arguments, see Opinion of Advocate General Cosmas, supra note 23 at footnote 31. On this last point, see however the argument supra on the difficulty of separating the interpretative competence of a provision depending on which entity is to be considered competent in the relevant field.

76 Parfums Dior, supra note 2 at para. 35.

77 Parfums Dior, supra note 2 at para. 36.

78 Opinion of Advocate General Cosmas, supra note 23.

79 James J. Callaghan, supra note 19 at 522, referring to Opinion 2/91 of the Court of 19 March 1993, Convention No 170 of the International Labor Organization concerning safety in the use of chemicals at work, [1993] ECR I-1061 at para. 36.

80 Pierre Pescatore, Opinion 1/94 on "Conclusion" of the WTO Agreement: is There an Escape From a Programmed Disaster?, [1999] C.M.L.Rev. (36) 387, at 395.

81 Anthony Arnull, Does the Court of Justice have inherent jurisdiction?, [1990] CMLRev (27) 683, 685.

82 Id. at 684.

83 Josef Drexl, supra note 19 at 32-33.

84 Julio A. Baquero Cruz, supra note 19 at 259.

85 Pierre Pescatore, supra note 80 at 388.

86 Josef Drexl, supra note 19 at 35.

87 Judgment of the Court of 22 October 1987, Foto-Frost v Hauptzollamt Lubeck-Ost, Case 314/85, [1987] ECR 4199.

88 It seems relevant to note that on the substance of the case, the Court held that it is for the Contracting Parties to specify whether a certain right is to be classified as an intellectual property right within the meaning of Article 50(1) of TRIPs. First of all, it allows the Court to avoid the danger indicated by Cosmas on the Court originating the harmonization process; and also to reach the same result as a denial of jurisdiction would have allowed: let the Member States determine the meaning of intellectual property right within TRIPs. More subtly it could show that the Court wanted to ascertain its jurisdiction in view of further developments, and not because it thought it had a pressing necessity to give its interpretation of the notion of intellectual property right within the meaning of TRIPs.

89 Similarly, see Geert A. Zonnekeyn, Mixed Feelings About the Hermès Judgment, [1999] Int'l Trade L. & Reg. 5(1) 20, at 23 who concludes, from an analysis of Hermès, "that the TRIPs Agreement should be subject to a centralized interpretation by the ECJ."

90 Parfums Dior, supra note 2 at para. 28.




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