European Union: Amsterdam Court Finds Bulgarian Trade Mark Decision To Be Contrary To Public Policy

In a judgment of 8 June 2011, the Amsterdam District Court ruled that a judgment issued by a Bulgarian court goes against public policy and thus cannot be recognized under the Brussels I Regulation.¹ The facts of the case are summarized below.

In 2008, Diageo, owner of the trade mark Johnnie Walker, confiscated in Bulgaria a container of whisky placed on the market outside the EU with its consent, claiming trade mark infringement. The confiscation took place on the basis of the group's Johnnie Walker trademark. In 2010, the Sofia District Court overturned the confiscation, on the basis of a so-called interpretative decision of the Bulgarian Supreme Court, in which a majority of the judges found that the import of genuine goods into Bulgaria which have been placed on the market with the consent of the trademark proprietor elsewhere, i.e. outside the European Economic Area (EEA), does not constitute an infringement of registered trade mark rights. In a dissenting opinion, five judges noted that pursuant to the Trade Mark Directive,² the import into Bulgaria of genuine goods from outside the EU or EEA, without the consent of the trade mark proprietor, should be considered trade mark infringement.³  

The Bulgarian company whose container was confiscated started proceedings before the Amsterdam District Court against Diageo's Dutch entity (owner of the Johnnie Walker registrations), claiming damages for unlawful confiscation.  In its defence, Diageo argued that the Sofia District Court's decision overturning the confiscation was contrary to public policy, within the meaning of Article 34(1) of the Brussels I Regulation. As stated above, the district court's judgment was based on an interpretative decision of the Bulgarian Supreme Court which, according to Diageo, went against the principles enunciated by the Court of Justice of the European Union (CJEU) in the Silhouette case.⁴ According to Diageo, the Bulgarian Supreme Court was obliged under the circumstances to request a preliminary ruling from the CJEU, pursuant to Article 267 of the Treaty of Lisbon. Needless to say, it did not do so and further failed to justify its decision. In this way, the Bulgarian Supreme Court violated a fundamental principle of European constitutional law which in turn constitutes a violation of European, and hence Dutch, public policy.

The Amsterdam District Court concurred that the Bulgarian Supreme Court should have requested a preliminary ruling from the CJEU. In this regard, the district court referred to the dissenting opinion, which mentions a violation of Community law. By failing to request a preliminary ruling, the Bulgarian court acted contrary to a fundamental principle of Community law which forms part of Dutch public policy. The court therefore dismissed the claims based on the Sofia District Court's judgment.

Judgments of EU courts are rarely refused recognition on grounds of public policy. However, as this rather exceptional case illustrates, fundamental principles of EU law are still given priority.

Diageo was represented in this case by Prof. Charles Gielen of NautaDutilh's Amsterdam office.

Footnotes

1. Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters

2. First Council Directive 80/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, replaced by Directive 2008/95/EC.

3. The Court of Justice referred to this decision by the Bulgarian Supreme Court in its order in the Canon case (order of 28 October 2010 in case C-449/09).

4. Decision of 16 July 1998, case C-355/96.

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