Trade Mark Courts - EU or National Law to Take Precedence?
Nokia Corp v Wärdell (Case C-316/05)
ECJ (First Chamber)
14 December 2006
Daily Law Notes Summary
The defendant imported into Sweden a quantity of “flash stickers”
for attaching to mobile telephones, a number of which bore the
name “Nokia” which had been registered by the claimant as a
Community trade mark for inter alia mobile telephones and their
accessories. In the claimant’s action against the defendant for
trade mark infringement, the defendant maintained that the
offending consignment had been delivered by the supplier without
his knowledge. It was held by the Swedish court that the
defendant had committed an act of infringement and there was some
risk that he might commit the same infringement in the future,
but that since he had never committed such acts before and could
only be accused of carelessness, the court would exercise the
discretion that it had under national law not to impose a
prohibition with a fine attached. On the claimant’s appeal, the
Högsta domstolen (Supreme Court) referred to the ECJ for a
preliminary ruling questions on the meaning of “special reasons”
for not making a prohibitory order, in art 98(1) of Regulation No
40/94, and allied matters. The EU Court decided that national
powers were not "special reasons" and that the court should have
done everything in its EU powers against the defendant.