Referring court and Member State
Netherlands, Third Instance, Hoge Raad der Nederlanden
Summary
The case was referred to the CJEU in Dutch proceedings between Diageo Brands BV, which is the proprietor of the trade mark of the whisky brand of Johnny Walker having its registered office in the Netherlands and which places that brand of whisky on the market in Bulgaria through a local exclusive importer, and Simiramida, which is established in Bulgaria and trades in alcoholic beverages, in relation to a claim for damages made by Simiramida for the injury caused to it by a seizure carried out at the request of Diageo of goods which were intended for Simiramida. Upon an arrival of a container holding bottles of whisky of the Johnny Walker brand from Georgia in the port of Varna, Diageo obtained permission from the Sofia City Court to have it seized alleging that the importation of the consignment into Bulgaria without authorisation constituted an infringement of the trade mark. Upon Simiramid’s appeal, the order was annulled by the Court of Appeal, Sofia. The appeal in cassation brought by Diageo had been dismissed by the Bulgarian Supreme Court, on formal grounds, and then the seizure carried out at the request of Diageo was lifted. Diageo brought substantive proceedings against Simiramida for infringement of the trade mark before the Sofia City Court. Diageo’s claims were dismissed by the Sofia City Court based on a Bulgarian Supreme Court judgment, stating that the import into Bulgaria of goods placed on the market outside the EEA with the permission of the proprietor of the trade mark does not infringe the rights conferred by the trade mark, as the Sofia City Court considered itself bound by that interpretative decision by virtue of Bulgarian procedural law. This judgment was not appealed against and became final. In the case in the main proceedings, Simiramida brought a compensation claim before the Dutch courts against Diageo for the damage it suffered as a result of the seizure based on the judgment by the Sofia City Court holding the seizure to be unlawful. Diageo submitted that that judgment cannot be recognised in the Netherlands on the ground that it is manifestly contrary to public policy in the Netherlands, within the meaning of Art 34(1) of Brussels I, due to the Sofia City Court’s manifest misapplication of EU law. Simiramida’s claim eventually reached the highest court in the Netherlands which decided to refer questions to the CJEU. In its first two questions, the referring court asked whether the fact that a judgment of a court of a MS is manifestly contrary to EU law and was delivered in breach of procedural safeguards constitutes a ground for refusal of recognition under Art 34(1) of Brussels I and whether, in such a context, the court of the MS in which recognition is sought must take account of the fact that the person opposing that recognition failed to make use of the legal remedies provided for by the law of the State of origin. The CJEU held that the fact that a judgment given in a MS is contrary to EU law does not justify that judgment’s not being recognised in another MS on the grounds that it infringes public policy in that State where the error of law relied on does not constitute a manifest breach of a rule of law regarded as essential in the EU legal order and therefore in the legal order of the MS in which recognition is sought or of a right recognised as being fundamental in those legal orders. The CJEU further held that that is not the case of an error affecting the application of a provision such as Art 5(3) of Directive 89/104/EEC. The CJEU decided that save where specific circumstances make it too difficult or impossible to make use of the legal remedies in the MS of origin, the individuals concerned must avail themselves of all the legal remedies available in that MS with a view to preventing a breach of public policy before it occurs. This is particularly so where the alleged breach of public policy stems from an alleged infringement of EU law.