O2 Holdings Ltd & Anor v Hutchison 3G UK Ltd

A national court has a discretion to refer questions of European Union law before trial. The appropriate stage depends on procedural organisation and efficiency, and on whether an answer will be necessary to enable the court to give judgment. A reference is premature where the questions depend on disputed facts, mixed questions of fact and law, or the identification of the relevant sign. It is also premature where a domestic counterclaim may dispose of the case without requiring any reference. The national court should first define the factual and legislative context and distinguish questions of legal interpretation from the application of the law to facts.

O2 Holdings Ltd & Anor v Hutchison 3G UK Ltd concerned an application for a preliminary reference under Article 234 of the EC Treaty in two consolidated trade mark claims. The claimants alleged that comparative advertising by the defendant infringed their bubble-device marks and advanced passing-off and related European law arguments. The defendant counterclaimed for invalidity of the marks.

The claimants sought referral of twelve questions concerning trade mark infringement, comparative advertising, national statutory defences and bad faith. The central issue was whether those questions were sufficiently necessary and defined to justify a reference before trial.

1. The application was refused. The Vice-Chancellor declined to refer any of the twelve questions, holding that a reference at that stage would be premature, probably incomplete, and likely to delay the trial and prejudice the quality of the evidence.
2. Under Article 234 of the EC Treaty, the national court has a discretion as to when to refer a question. Irish Creamery Milk Suppliers Association v Ireland [1981] ECR 735 established that the timing is governed by procedural organisation and efficiency. The court need not invariably find the facts first, but must decide when a ruling is necessary to enable it to give judgment.
3. None of the questions was presently shown to be necessary. The counterclaim might succeed on the ground that the bubble marks were devoid of distinctive character, in which event the questions would not arise. The possibility that the counterclaim might succeed meant that necessity could not be established.
4. The identity of the relevant sign was unresolved. The court had not been told whether the relevant sign was each bubble image or the whole sequence in the advertisement. Following the approach identified in SA Société LTJ Diffusion v SA Sadas [2003] ECR I-2799, the national court had first to determine what the average consumer would perceive as the relevant mark or sign.
5. Most questions depended on prior findings of fact or mixed fact and law. The distinction between interpretation and application, emphasised in Wiener GmbH v Hauptzollamt Emmerich [1997] ECR I-6495, made it preferable for the trial judge to establish the facts first and refer only those questions that remained genuinely necessary.