Avis juridique important

61975J0086

European Court reports 1976 Page 00871 Greek special edition Page 00363 Portuguese special edition Page 00387

Summary

Keywords

1 . INDUSTRIAL PROPERTY - PROTECTION - TRADE-MARK RIGHT - EXERCISE - PROPRIETOR OF A MARK IN ALL THE MEMBER STATES OF THE COMMUNITY - SIMILAR PRODUCTS BEARING THE SAME MARK AND COMING FROM A THIRD COUNTRY - IMPORTATION INTO THE COMMON MARKET - PREVENTION - CONFORMITY WITH THE PROVISIONS OF THE TREATY ( EEC TREATY , ARTICLE 9 ( 2 ), ARTICLE 10 ( 1 ), ARTICLE 36 AND ARTICLE 110 )

2 . COMPETITION - RESTRICTIVE AGREEMENTS - TRADE-MARK RIGHT - EXERCISE - PROHIBITION ( EEC TREATY , ARTICLE 85 ( 1 ))

3 . COMPETITION - RESTRICTIVE AGREEMENTS - TRADERS WITHIN THE COMMON MARKET AND IN THIRD COUNTRIES - TRADE-MARK RIGHT - EXERCISE - PRODUCTS ORIGINATING IN THIRD COUNTRIES SIMILAR TO THOSE PROTECTED BY A MARK WITHIN THE COMMUNITY - OFFER - REDUCTION - PROHIBITION ( EEC TREATY , ARTICLE 85 ( 1 ))

4 . COMPETITION - RESTRICTIVE AGREEMENTS - TERMINATION OF VALIDITY - SUBSEQUENT EFFECTS - PROHIBITION - APPLICATION - LIMITS - NATIONAL TRADE-MARK RIGHTS - EXERCISE ( EEC TREATY , ARTICLE 85 ( 1 ))

6 . INDUSTRIAL PROPERTY - PROTECTION - TRADE-MARK RIGHT - EXERCISE - PROPRIETOR OF A MARK IN THE MEMBER STATES - POWER TO PREVENT THE EXERCISE BY A THIRD PARTY OF THE SAME TRADE-MARK OWNED IN A THIRD COUNTRY - OBLITERATION OF THE MARK ON THE PRODUCTS CONCERNED FOR THE PURPOSES OF EXPORTS TO THE COMMUNITY - AFFIXING OF A DIFFERENT MARK - PERMISSIBLE CONSEQUENCES

Summary

1 . NEITHER THE RULES OF THE TREATY ON THE FREE MOVEMENT OF GOODS NOR THOSE ON THE PUTTING INTO FREE CIRCULATION OF PRODUCTS COMING FROM THIRD COUNTRIES NOR , FINALLY , THE PRINCIPLES GOVERNING THE COMMON COMMERCIAL POLICY , PROHIBIT THE PROPRIETOR OF A MARK IN ALL THE MEMBER STATES OF THE COMMUNITY FROM EXERCISING HIS RIGHT IN ORDER TO PREVENT THE IMPORTATION OF SIMILAR PRODUCTS BEARING THE SAME MARK AND COMING FROM A THIRD COUNTRY .

2 . A TRADE-MARK RIGHT , AS A LEGAL ENTITY , DOES NOT POSSESS THOSE ELEMENTS OF CONTRACT OR CONCERTED PRACTICE REFERRED TO IN ARTICLE 85 ( 1 ).

NEVERTHELESS THE EXERCISE OF THAT RIGHT MIGHT FALL WITHIN THE AMBIT OF THE TREATY IF IT WERE TO MANIFEST ITSELF AS THE SUBJECT , THE MEANS , OR THE CONSEQUENCE OF A RESTRICTIVE PRACTICE .

3 . A RESTRICTIVE AGREEMENT BETWEEN TRADERS WITHIN THE COMMON MARKET AND COMPETITORS IN THIRD COUNTRIES THAT WOULD BRING ABOUT AN ISOLATION OF THE COMMON MARKET AS A WHOLE WHICH , IN THE TERRITORY OF THE COMMUNITY , WOULD REDUCE THE SUPPLY OF PRODUCTS ORIGINATING IN THIRD COUNTRIES AND SIMILAR TO THOSE PROTECTED BY A MARK WITHIN THE COMMUNITY , MIGHT BE OF SUCH A NATURE AS TO AFFECT ADVERSELY THE CONDITIONS OF COMPETITION WITHIN THE COMMON MARKET . IN PARTICULAR IF THE PROPRIETOR OF THE MARK IN DISPUTE IN THE THIRD COUNTRY HAS WITHIN THE COMMUNITY VARIOUS SUBSIDIARIES ESTABLISHED IN DIFFERENT MEMBER STATES WHICH ARE IN A POSITION TO MARKET THE PRODUCTS AT ISSUE WITHIN THE COMMON MARKET SUCH ISOLATION MAY AFFECT TRADE BETWEEN MEMBER STATES .

4 . FOR ARTICLE 85 TO APPLY TO CASES OF AGREEMENTS WHICH ARE NO LONGER IN FORCE IT IS SUFFICIENT THAT SUCH AGREEMENTS CONTINUE TO PRODUCE THEIR EFFECTS AFTER THEY HAVE FORMALLY CEASED TO BE IN FORCE .

AN AGREEMENT IS ONLY REGARDED AS CONTINUING TO PRODUCE ITS EFFECTS IF FROM THE BEHAVIOUR OF THE PERSONS CONCERNED THERE MAY BE INFERRED THE EXISTENCE OF ELEMENTS OF CONCERTED PRACTICE AND OF COORDINATION PECULIAR TO THE AGREEMENT AND PRODUCING THE SAME RESULT AS THAT ENVISAGED BY THE AGREEMENT .

THIS IS NOT SO WHEN THE SAID EFFECTS DO NOT EXCEED THOSE FLOWING FROM THE MERE EXERCISE OF THE NATIONAL TRADE-MARK RIGHTS . AND IN PARTICULAR WHEN A FOREIGN TRADER CAN OBTAIN ACCESS TO THE COMMON MARKET WITHOUT AVAILING HIMSELF OF THE MARK IN DISPUTE .

FURTHERMORE , IN SO FAR AS THE EXERCISE OF A TRADE-MARK RIGHT IS INTENDED TO PREVENT THE IMPORTATION INTO THE PROTECTED TERRITORY OF PRODUCTS BEARING AN IDENTICAL MARK , IT DOES NOT CONSTITUTE AN ABUSE OF A DOMINANT POSITION WITHIN THE MEANING OF ARTICLE 86 OF THE TREATY .

Parties

IN CASE 86/75

REFERENCE TO THE COURT UNDER ARTICLE 177 OF THE EEC TREATY BY THE SO- OG HANDELSRET , COPENHAGEN , ( THE ADMIRALTY AND COMMERCIAL COURT , COPENHAGEN ) FOR A PRELIMINARY RULING IN THE ACTION PENDING BEFORE THAT COURT BETWEEN

EMI RECORDS LIMITED , MIDDLESEX ,

CBS GRAMMOFON A/S , VANLOSE ,

Subject of the case

ON THE INTERPRETATION OF THE PROVISIONS OF THE TREATY ON THE FREE MOVEMENT OF GOODS AND ON THE RULES ON COMPETITION IN THE MATTER OF THE LAW ON TRADE-MARKS ,

Grounds

1 BY AN ORDER OF 24 JULY 1975 WHICH WAS RECEIVED AT THE COURT REGISTRY ON 1 AUGUST 1975 THE SO- OG HANDELSRET , COPENHAGEN , SUBMITTED , PURSUANT TO ARTICLE 177 OF THE EEC TREATY , THE FOLLOWING QUESTION FOR A PRELIMINARY RULING :

' MUST THE PROVISIONS IN THE TREATY ESTABLISHING THE EUROPEAN ECONOMIC COMMUNITY , ESPECIALLY THESE RELATING TO THE FREE MOVEMENT OF GOODS , BE INTERPRETED AS DISENTITLING A FROM EXERCISING ITS RIGHTS DERIVING FROM THE NATIONAL TRADE-MARK LAW OF THE MEMBER STATES TO PREVENT THE SALE BY B IN THE MEMBER STATES OF GOODS BEARING TRADE-MARK X , WHEN SUCH GOODS ARE MANUFACTURED AND MARKED WITH THE MARK X OUTSIDE THE COMMUNITY WHERE B IS ENTITLED TO USE MARK X?

2 IT IS CLEAR FROM THE INFORMATION SUPPLIED BY THE NATIONAL COURT THAT THE TRADE-MARK IN QUESTION ORIGINALLY BELONGED TO AN AMERICAN COMPANY WHICH IN 1917 TRANSFERRED TO ITS ENGLISH SUBSIDIARY ITS INTERESTS AND GOODWILL IN VARIOUS COUNTRIES INCLUDING THE STATES WHICH PRESENTLY MAKE UP THE COMMUNITY .

3 AT THE SAME TIME THE AMERICAN COMPANY TRANSFERRED TO ITS ENGLISH SUBSIDIARY A NUMBER OF TRADE-MARKS , INCLUDING THE ONE IN DISPUTE , IN RESPECT OF THE SAID COUNTRIES WHILST RETAINING THIS MARK IN RESPECT OF THE UNITED STATES AND OTHER THIRD COUNTRIES .

4 THIS MARK WAS SUCCESSIVELY ACQUIRED AFTER 1922 BY VARIOUS AMERICAN AND ENGLISH UNDERTAKINGS AND IS PRESENTLY OWNED IN A CERTAIN NUMBER OF COUNTRIES INCLUDING THE MEMBER STATES BY THE ENGLISH COMPANY , EMI RECORDS LIMITED , AND IN OTHER COUNTRIES , INCLUDING THE UNITED STATES , BY THE AMERICAN COMPANY CBS INC ., OF WHICH CBS GRAMMOPHON A/S IS ITS SUBSIDIARY IN DENMARK .

5 IT IS CLEAR FROM THE INFORMATION SUPPLIED BY THE SO- OG HANDELSRET THAT THE PROPRIETOR OF THE MARK IN THE UNITED STATES SELLS IN THE COMMUNITY THROUGH ITS SUBSIDIARIES ESTABLISHED THERE PRODUCTS BEARING THIS MARK AND MANUFACTURED IN THE UNITED STATES .

6 THE ESSENTIAL PURPOSE OF THE QUESTION SUBMITTED IS TO ASCERTAIN WHETHER THE PROPRIETOR OF A MARK IN A MEMBER STATE OF THE COMMUNITY MAY EXERCISE HIS EXCLUSIVE RIGHT TO PREVENT THE IMPORTATION OR MARKETING IN THAT MEMBER STATE OF PRODUCTS BEARING THE SAME MARK COMING FROM A THIRD COUNTRY .

Decision on costs

COSTS

37 THE COSTS INCURRED BY THE DANISH GOVERNMENT , THE GOVERNMENT OF THE FEDERAL REPUBLIC OF GERMANY , THE FRENCH GOVERNMENT , THE IRISH GOVERNMENT , THE NETHERLANDS GOVERNMENT , THE GOVERNMENT OF THE UNITED KINGDOM AND THE COMMISSION OF THE EUROPEAN COMMUNITIES , WHICH SUBMITTED OBSERVATIONS TO THE COURT , ARE NOT RECOVERABLE .

38 AS THESE PROCEEDINGS ARE , IN SO FAR AS THE PARTIES TO THE MAIN ACTION ARE CONCERNED , A STEP IN THE ACTION PENDING BEFORE THE NATIONAL COURT , COSTS ARE A MATTER FOR THAT COURT .

Operative part

ON THOSE GROUNDS ,

IN ANSWER TO THE QUESTION REFERRED TO IT BY THE SO- OG HANDELSRET , COPENHAGEN , BY ORDER OF 24 JULY 1975 , HEREBY RULES :

1 . THE PRINCIPLES OF COMMUNITY LAW AND THE PROVISIONS ON THE FREE MOVEMENT OF GOODS AND ON COMPETITION DO NOT PROHIBIT THE PROPRIETOR OF THE SAME MARK IN ALL THE MEMBER STATES OF THE COMMUNITY FROM EXERCISING HIS TRADE-MARK RIGHTS , RECOGNIZED BY THE NATIONAL LAWS OF EACH MEMBER STATE , IN ORDER TO PREVENT THE SALE IN THE COMMUNITY BY A THIRD PARTY OF PRODUCTS BEARING THE SAME MARK , WHICH IS OWNED IN A THIRD COUNTRY , PROVIDED THAT THE EXERCISE OF THE SAID RIGHTS DOES NOT MANIFEST ITSELF AS THE RESULT OF AN AGREEMENT OR OF CONCERTED PRACTICES WHICH HAVE AS THEIR OBJECT OR EFFECT THE ISOLATION OR PARTITIONING OF THE COMMON MARKET .

2 . IN SO FAR AS THAT CONDITION IS FULFILLED THE REQUIREMENT THAT SUCH THIRD PARTY MUST , FOR THE PURPOSES OF HIS EXPORTS TO THE COMMUNITY , OBLITERATE THE MARK ON THE PRODUCTS CONCERNED AND PERHAPS APPLY A DIFFERENT MARK FORMS PART OF THE PERMISSIBLE CONSEQUENCES OF THE PROTECTION WHICH THE NATIONAL LAWS OF EACH MEMBER STATE AFFORD TO THE PROPRIETOR OF THE MARK AGAINST THE IMPORTATION OF PRODUCTS FROM THIRD COUNTRIES BEARING A SIMILAR OR IDENTICAL MARK .