OPINION OF MR ADVOCATE GENERAL REISCHL

DELIVERED ON 8 JUNE 1982 ( 1 )

Mr President,

Members of the Court,

Although there is already a wellestablished body of case-law on the question of the extent to which exceptions to the principle of the free movement of goods are permitted on the basis of national rights to a patent or trade mark, or of national copyright, these are the first proceedings for a preliminary ruling in which it is necessary to consider the question of the effects of the relevant provisions of the EEC Treaty on the exercise, by the proprietor of a national right in a design, of the powers vested in him.

Nano- Kean Gifts BV, a commercial undertaking whose registered office is at The Hague, sells amongst other things ladies' handbags imponed from Taiwan. On 23 April 1979, it filed the design for the handbag in question with the Benelux Designs Office.

A United States patent design in respect of a corresponding design has been in existence since January 1979. The application for it had already been filed in March 1977. The inventor is stated to be Mr Siegel from Arizona and the assignee to be Amba Marketing Systems Inc.

At the beginning of 1980, Keurkoop BV, a mail-order company whose registered office is at Rotterdam, offered for sale or even by way of gift ladies' handbags having the same or virtually the same appearance as the abovementioned registered design which were also directly imponed from Taiwan into the Netherlands.

Nancy Kean Gifts applied for and was granted on the basis of its exclusive rights under the Eenvormige Benelux-Wet inzake Tekeningen of Modellen [Uniform Benelux Law on Designs, hereinafter referred to as “the Uniform Benelux Law”], which entered into force on 1 January 1975, an interlocutory injunction ondering Keurkoop BV to refrain from “manufacturing, importing, selling, offering for sale, exhibiting, delivering, using for industrial or commercial purposes or from holding in stock for one of those purposes” ladies' handbags of the kind in question.

Keurkoop BV lodged an appeal against that injunction.

In its judgment of 20 May 1981 which led to this reference for a preliminary ruling, the Third Chamber of the Gerechtshof [Regional Court of Appeal], The Hague, held in substance, in the light of the facts of the case, that Nancy Kean Gifts was not the author of the design for the handbag and had not filed the design with the consent of, or on the basis of any legal relationship with, the author or any person entitled under him for the Benelux area.

From a legal point of view, the court making the reference has made the following findings, in particular in paragraphs 11 and 12 of its judgment. Contrary to the appellant's contentions, the meaning and purpose of Article 1 et seq. of the Uniform Benelux Law is not to “reward” the creative work of the author of the design. Instead, as Article 1 of that law makes clear, it is “the altered appearance of a product serving a utility purpose which may be protected as a design”. Accordingly, the law does not require the design to be the expression of a creative or anistie achievement. The purpose of that provision is to prevent the imitation for a specific period of designs chosen by industrial manufacturers and craftsmen. Thus, the industrial propeny right under Article 3 (1) of the Uniform Benelux Law arises, in principle, upon first registration and irrespective of whether the person filing the design is an industrial manufacturer, a craftsman or even the author of the design. If registration is effected without the consent of the author of the design or of the person who is to be regarded as the author under the Uniform Benelux Law, the author alone may, by vinue of Article 5(1), within a certain period lay claim to the registration or require its cancellation.

Since the appellant expressed the opinion that the provisions described were incompatible with Anieles 3C and 36 of the EEC Treaty and that the action for an injunction could not in any event have succeeded if it had obtained the handbags in question “elsewhere in the Common Market”, the Gerechtshof referred to the Court for a preliminary ruling under Article 177 of the EEC Treaty the following questions:

“1.

Is it compatible with the rules contained in the EEC Treaty concerning the free movement of goods, in particular with the provisions of Article 36 thereof, to give application to the Uniform Benelux Law on Designs in so far as the effect of that law is to grant exclusive rights in a design, such as referred to in that law and serving an object and function described in paragraph 11 of this judgment, to the person who was the first to file it with the competent authority, when no person other than the person claiming to be the author of the design or the person commissioning or employing the author has the opportunity to challenge the right of the person filing the design and/or to defeat an application for an injunction lodged by that person by relying on the fact that the latter is not the author of the design or the person commissioning or employing the author?

2.

Can the application for an injunction be defeated in so far as it concerns products which the defendant has obtained in a country belonging to the Common Market other than the country (belonging to the Common Market) for which the injunction is sought if no rights of the person who filed the design and who seeks the injunction are infringed in that other country by the marketing of those products?”

My opinion on those questions is as follows:

1.

The answer to the questions presupposes that the facts on which the court making the reference is called upon to give a ruling fall within the scope of Articles 30 and 36 of the EEC Trear. It is well known that the purpose of those provisions is merely to ensure the free movement of goods “between Member States”. However, the main action is characterized precisely by the fact that a Netherlands commercial undertaking is exercising the rights to territorial protection which are vested in it in respect of products directly imported from a nonmember country, namely Taiwan, against another Netherlands commercial undertaking which also obtains those products from Taiwan. The respondent and the Commission therefore consider on the basis of the findings concerning trademark law made by the Court of Justice in the EMI Records cases ( 2 ), that the exercise of a right in a design in order to prevent the sale of products from a nonmember country does not impair the free movement of goods between Member States.

The appellant, however, maintains inter alia that the free movement of goods between Member States is already impaired by the fact that the judgment of the Netherlands Court is enforceable in the other two Benelux countries.

This dispute, which concerns the question of the status of the Benelux economic area within the Common Market as well as the problem of the recognition and enforcement of judicial decisions in the other Benelux countries, need not, however, in my view, be examined in further detail in the present case. Instead, the only matter ofimportance is chat the questions raised, evidently as a result of the appellant's submissions according to which handbags of the same design originating in Taiwan could be imported into the Netherlands from other Member Sutes, are regarded by the court making the reference as relevant for the purposes of its decision. According to the established case-law of the Court of Justice, as expressed more recently inter alia in the Damiani judgment ( 3 ) , it is for the national court alone, in the light of the division of jurisdiction under Article 177 of the EEC Treaty, to assess with full knowledge of the matter before it, the relevance of the questions of law raised by the dispute before it and the necessity for a preliminary ruling so as to enable it to give judgment, since only the court making the reference has a direct knowledge of the facts of the case and of the arguments put forward by the parties and will have to give judgment in the case. Accordingly, I consider it appropriate to answer both questions.

2.

The court making the reference has been asked to determine whether the operation of the Uniform Benelux Law is compatible with the provisions of the EEC Treaty governing the free movement of goods. In order to clarify that question an interpretation of the provisions governing the free movement of goods, in particular Articles 3C and 36 of the EEC Treaty, is sought from the Court. In that regard it must be borne in mind that the Court of Justice may give a ruling under Article 177 of the EEC Treatv onlv on the interpretation of the Treaty and of act* of the institutions ol the Communin or on the validity of such acts, bui noi on the interpretation ot 2 provisionn of national law Accordingly, the purpose ol the tirsi question raised rn ine court making the reference is to ascertain whether Articles 30 and 36 of the Treaty are to be interpreted as precluding the application of provisions of national law which confer on the first applicant for registration an exclusive right in a design, without there being any opportunity for persons other than the author, the person commissioning or employing che author or any person entitled under the author to challenge that right on the ground that the applicant is not the actual author of the design.

In answering that question, it is necessary to proceed on the assumption that the exercise of an exclusive territorial right constitutes in principle an obstacle to the free movement of goods between Member States. Accordingly, any provisions of national law the application of which leads to the obstruction of trade between the Member States are in principle to be regarded as measures having an effect equivalent to quantitative restrictions within the meaning of Article 30 of the EEC Treaty.

However, according to Article 36 of the EEC Treaty, the provisions of Anieles 30 to 34 do not preclude such prohibitions or restrictions on imports which are justified infer alia on grounds of the protection of industrial and commercial property.

(a)

The first question to arise is whether national rights in designi also fall vithm the abovementioned exception. In mv opinion, it is necessary, as is emphasized by all those taking part in the proceedings, to take as a basis the Coun's existing case-law on the relationship between the rules governing the free movement of goods on the one hand and national industrial and intellectual property rights on the other.

After initially establishing in a series of decisions — at first only by implication in the Deutsche Grammophon Gesellschaft case ( 4 ) and finally by way of an unequivocal statement in the GEMA case ( 5 ) — that reliance on the right to a patent or trade mark may justify an exception to the rules governing the free movement of goods, the Court has made it clear that Article 36 of the EEC Treaty also applies to copyright and consequently to related protected rights. As is apparent from the last-mentioned judgment, the Court proceeded from the premise that there were no reasonable grounds for distinguishing between industrial and commercial property rights on the one hand and copyright on the other, as far as the commercial exploitation of such rights is concerned.

However, the distinctive feature of a right in a design is that it can be justified by considerations relating to copyright on the one hand and by considerations of industrial policy on the other. It is along those lines, too, that the form and scheme of national legislation relating to rights in a design differ from one country to another. In some cases they are modelled on patent law, in others on the law of copyright. That question need not be examined in detail at this point since, according to the case-law of the Court, both the right to a patent and copyright come within the scope of the protection of industrial and commercial property within the meaning of Article 36 of the EEC Treaty, with the result that a right in a design must also be included in that category. In that connection, it should not be forgotten that, as is apparent inter alia from Article 3 (1) of the Uniform Benelux Law, the Benelux legislature, too, regards an exclusive right in a design as an industrial property right within the meaning of the Paris Convention of 1883 for the Protection of Industrial Property. Article 1 (2) of that convention, which was most recently amended in Stockholm in 1967 and to which all the Member States have acceded, includes industrial designs amongst the articles to which the protection of industrial property extends.

Furthermore, the fact that the Council also proceeds on the assumption that industrial designs must be regarded as industrial property rights is apparent, as the Government of the United Kingdom points out, in particular from Article 4 (2) (2) (b) of Regulation No 17 of the Council of 6 February 1962 (Official Journal, English Special Edition 1959-1962, p. 87) in which patents, utility models, designs and trade marks are listed as subgroups of industrial property rights.

(b)

Since, therefore, it is necessary to proceed from the premise that conflicts between a right in a design and the principle of the free movement of goods within the common market must be also resolved in accordance with Article 36 of the EEC Treaty, reference may also be made to the hitherto consistent case-law of the Court of Justice according to which it follows from the wording, in particular of the second sentence, and trom the position oi that article that the EEC Treaty does not affect the existence of industrial and commercial property rights permitted under the legislation of a Member State, although the exercise of those rights may very well be restricted, according to the circumstances, by the prohibitions laid down in the Treaty. As an exception to one of the fundamental principles of the common market, Article 36 permits restrictions on the free movement of goods, according to the case-law of the Court, only in so far as such restrictions are justified for the protection of the rights which constitute the specific subject-matter of the industrial and commercial property rights concerned. Therefore in examining the question whether a right in a design arising under the Benelux Law may successfully displace the principle of the free movement of goods, it is necessary to begin by defining the specific subject-matter of that territorial property right in order to deduce from it which barriers to trade may be permitted under Community law and which may not.

In that regard, the question also arises whether the specific subject-matter of a right in a design is determined, as the appellant contends, by reference to a uniform, as it were ideal, model of this property right or whether, as the United Kingdom, German and French Governments as well as the respondent and the Commission maintain, it is necessary, in determining the specific subject-matter of the right in a design within the meaning of Article 36 of the EEC Treaty, to take as a basis each time the relevant national legislation governing rights in a design, regard being had to the specific structure and content of that legislation.

In my view, in the light of the meaning and purpose of the exception provided for bv Article 36 of the EEC Treaty, the answer to that question can only be that as long as the national provisions of the individual Member States on the protection of industrial property in the Community have not been harmonized, only the legislatures of the Member States may determine whether industrial property rights exist. ( 6 ) It also follows that, in principle, it is for the Member States alone to determine the degree of protection which they wish to provide in respect of industrial and commercial property rights as well as the precise form and content to be given to such rights, subject nevertheless to compliance with the limits set out by the Treaty.

In the light of the above considerations, the specific subject-matter of a right in a design under the Benelux Law may be defined, as suggested by the Commission on the basis of the case-law of the Court, as the exclusive right of the proprietor, in practice the person filing the design, to market a product of a given industrial design for the first time. That description, which does not claim to be exhaustive, of the specific subject-matter of a right in a design and which relates to the legal proprietor, should moreover, as far as I can see, hold true for all rights in a design arising in the Member States and also corresponds to the description of the specific subject-matter of the right to a patent and to a trade mark hitherto applied by the Court.

(c)

However, in view of the structural differences between national design rights, the problem of the proprietor and the structure of the right can be resolved only by the legislature of each Member State.

In consequence of the disparities between the objectives pursued in relation to the protection of national rights in a design — the purpose of the Uniform Benelux Law is also, as the Court has heard, to protect at least industrial manufacturers or craftsmen who wish to distinguish their products from those of others by endowing them with a distinctive form — it must be recognized that the proprietor of a right in a design may also be a person who has filed the design without the author's consent.

Finally, the rules embodied in the Uniform Benelux Law would not be open to challenge even if the view were to be taken that the EEC Treaty restricts the power of the Member States to determine the form of industrial property rights so as to ensure that the author of the design is afforded some degree of protection by the right in the design. In that regard, it should be borne in mind that, as the Gerechtshof and the Netherlands Government in particular have pointed out, the system of rules embodied in the Uniform Benelux Law serves inter alia to provide for legal certainty inasmuch as the right arises upon registration. In that regard, in order to simplify matters, the question whether the person applying for registration and the author of the design are one and the same person was deliberately omitted from consideration. In any event, where registration is effected by a third party, the author's rights are protected by the fact that he may within a certain period lay claim to the registration or demand its cancellation.

If, on the other hand, as the appellant claims, that opportunity were also granted to third parties, the result would be that the actual author of the design would no longer be able to assert his rights on account of the design's lack of novelty and that would constitute a serious encroachment bv Community law on the existence of the right guaranteed by national law.

Furthermore, the compatibility of a legislative technique of that kind with Community law is also apparent from the fact that corresponding rules are provided for in respect of patents by Articles 56 and 57 of the Convention for the European Patent for the Common Market (No 76/76/EEC, Official Journal L 17, 26. 1. 1976, p. 1).

(d)

As may be inferred from the judgment making the reference, the appellant also takes the view that the protection afforded by the Uniform Benelux Law to “copying” is incompatible with the principle of the free movement of goods.

As regards that contention too it is necessary to point out in the first place that the question whether “copying” qualifies for protection must also be regarded as a matter covered by the content of legislation relating to rights in a design and is thus subject to the system established by the Member States. In this case, too, as the Government of the Federal Republic of Germany rightly sutes, it is not possible, because of the lack of harmonization of national laws governing rights in a design, to point to ideal standard models for design legislation suitable for the European Economic Community, and in particular for the concept of novelty as the dividing line between an imitation or “copy” which qualifies for protection and one which does not. A glance at the laws of the Member States in the matter of designs shows instead that under the legislation of the other Member States, in this field rights are to a certain extent created for the protection of the “copying” of antique designs, designs from other cultures, etc. As a rule, the individual laws on designs establish the dividing line between “copying” which qualifies for protection and an imitation which does not solely by reference to the concept of novelty which, as is known, spans a range of variation from subjective to absolutely objective novelty. With regard to this concept, too, it cannot be the Court's task, contrary tothe view expressed by the appellant, to bring into line with each other the as yet unharmonized laws of the individual Member States in regard to designs.

3.

In its second question, the court making the reference finally seeks to ascertain whether the proprietor of a right in a design in the Netherlands may prevent the importation of products of an identical design if such products have been lawfully marketed in another Member State. In order to answer this question, it is necessary once again to refer to the distinction drawn by the Court in its established case-law between the existence and the exercise of industrial property rights. Even though it is quite clear that under Community law as it stands at present, a right in a design lawfully acquired in a Member State may in principle be relied upon pursuant to the first sentence of Article 36 of the Treaty to prevent the importation of goods which, as regards their design, display characteristics identical to those of the protected design, it remains to be considered whether the exercise of such a right constitutes “a means of arbitrary discrimination” or “a disguised restriction on trade between Member States” within the meaning of the second sentence of Article 36 of the Treaty.

In order to define the limits of the lawful exercise of mdustnal and commercial property rights under Article 36, the Court of Justice has developed the principle that the proprietor of an industrial and commercial propertv right which is protected by the legal provisioni of a Member State may not rely on those provisions in order to prevent the importation of a product which has been lawfully marketed in another Member State by himself or with his consent. ( 7 )

If the proprietor of the protected right were entitled to rely on those provisions, he would have the opportunity to partition national markets and thus restrict trade between the Member States even though no such restriction were needed to enable him to preserve the substance of the exclusive rights deriving from the protected right.

It should also be said, in regard to the submissions of the United Kingdom and of the French Government on this point, that it is beyond doubt, at least since the Court's judgment in the Merck case ( 8 ) that once the proprietor of an industrial property right has lawfully marketed the protected product in a Member State or the product has been placed on the market there with his consent, that product may be freely bought and sold throughout the common market without there being any need to consider whether or not the proprietor was afforded any protection in the Member State concerned. If, on the other hand, the protected product is manufactured or marketed in a Member State without the consent of the proprietor, the latter may prevent the importation of that product into the protected area.

Finally, another problem stems from the fact that under the Uniform BeneluxLaw a right in a design arises upon the filing of the design and that the person filing the design and the author of the design are not necessarily one and the same person, which may lead to the result that parallel industrial property rights which are identical in origin may arise in different Member Sutes. In that connection, it should be noted that in so far as the proprietors of such rights in a design which are identical in origin are linked by legal or economic ties from which a single origin of the design may be inferred, they may not, on the basis of an analogous application of the case-law of the Court on trade marks which are identical in origin, ( 9 )exercise the powers vested in them by national law for the purpose of preventing the importation of products having that protected design; otherwise it would be possible to partition national markets artificially by means of rights in a design which are identical in origin and exist concurrently in the individual Member States. Such, in particular, is the case, according to the case-law of the Court, where the exercise of such rights in the subject-matter, means or consequence of an agreement or concerted practice prohibited by the Treaty.

Parallel rights in a design may not, however, be regarded as identical in origin if, although they are based on imitations or even on the appropriation of any original work created by a third party, there is no legal or economic connection, beyond the common origin of the designs, between the individual applicants for registration.

If, therefore, in such a case, the identical origin of the designs were recognized solely on the ground that both of the designs concerned can be traced back to the same creative work, the legislation governing rights in a design in those Member States which merely require a design to be filed for an industrial property right to come into existence would, as the Government of the Federal Republic of Germany rightly points out, ultimately and quite unacceptably be deprived of its substance.

However, it is for the court hearing the case to determine the nature of the relations existing between individual proprietors of the right and whether such rights in a design, which are identical in origin but differ from one Member State to another, are in the circumstances of the case exercised by a proprietor with the aim of partitioning markets.

4.

In conclusion, I propose that in the light of the above considerations the question submitted by the Gerechtshof should be answered as follows:

1.

Anieles 30 and 36 of the EEC Treaty are to be interpreted as not precluding the application of legal provisions of the Member States which confer on the first person to file the design exclusive rights thereto, when no person other than the author of the design, the person commissioning of employing the author or the person entitled under the author has the opportunity to challenge that right on the ground that the person filing the design is not its author or the person commissioning or employing the author.

2.

The proprietor of a right in a design acquired under the law of a Member State may not under Article 36 of the EEC Treaty rely on his exclusive right in order to prevent the importation of a product which has been lawfully marketed in another Member State either by himself or with his consent. However, the legal proprietor's exclusive right is enforceable in so far as the protected product has been marketed in a Member State without his consent. Such conduct may, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States within the meaning of the second sentence of Article 36 of the EEC Treaty if it is demonstrated that the proprietor exercises his right with the aim of artificially partitioning markets.

( 1 ) Translated from the German.

( 2 ) Judement of 15 June 1976 in. Case 51/75 EMI Records Limites v CBS United Kingaom Limited [1976] ECR 811.

Judgment of 15 june 1976 in Case 86/75 EMI Records Limited v CBS Grammojon A/S [l976] ECR 871.

Judment of 15 June 1976 in Case 96/75 EMI Records Limited v CBS Schaliplatten GmbH [1976] ECR 913

( 3 ) Juggment of 14. 2. 1980 in Case 53/79 Office National des Pensions pour Travailleurs Salariés v Florante Damiani [1980] ECR 273

( 4 ) Judgment of 8 June 1971 in Case 78/79 Deutsche Crobmarąte GmbH \Metro-SB-Crobmarąte (GmbH 6 Co. KG [1971] ECR 487

( 5 ) Judgment of 22 January 1981 in joined Cases 55 and 57/82 (Muss. I erineb membran GmbH and Kiel inter. njnonj. CEMA [1981] ECR 147.

( 6 ) Sec ludgmeni o! 29 February 1968 in Cut 24/76 Parke, Davu & Co. v Provet, Hette, Betntema-Interpharm arui Centralam [1968] ECR 55.

( 7 ) See for example

Judgment of 31 October 1974 in Case 15/74 Ceni'jrjrm B1 and AJnajn de Preppers Steeling Drag in [1974]. ECR 1147 [parallel parents]..

Judgment of 22 June 1976 in Case 119/75 Terranova Indusne C.A Kapterer & Co [1976] ECR 1939.

Judgment of 8 June 1971 in Case 78/79 Dentsche t.rjmmnrho Metro usee footnote 1 at page 2879].

Judgment of 28 January 1981 in Joined Cases 55 and 57'k: GEMA see footnote 2 at page 2879].

( 8 ) Judgment of 14 July 1981 in Case 187/80 Merek & Co. in. v ļiefhar BV and Petrut Stephanin Exier [198ļ] FCR 2863

( 9 ) See Judement o' 18 February 1971 in Case 40/70 Vm EDA Srl ana Oters [1971] ECR 69.

Judement of 13 July 1974 in Case 192/73 Van Zuylen hr'n Hag AG [1974] ECR 731