European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

When called upon to combine intellectual property with competition rules, the Court of Justice first established the distinction between the existence of a right, which is lawful, and the exercise of a right, which could come under the prohibition. Although the opposition between the existence and the exercise of a right was efficient as part of the rules identifying certain anticompetitive conduc …

Specific subject-matter of intellectual property rights

When called upon to combine intellectual property with competition rules, the Court of Justice first established the distinction between the existence of a right, which is lawful, and the exercise of a right, which could come under the prohibition. Although the opposition between the existence and the exercise of a right was efficient as part of the rules identifying certain anticompetitive conduct, it is by contrast, insufficiently precise to define the scope of intellectual property rights in relation to the free movement of goods. Any exercise of an exclusive right established at national level undermines, by its nature, the free movement of goods within the Union. This is how the concept of specific subject-matter of intellectual property rights appeared . 

The scope of the specific subject-matter - which EU law cannot affect - is defined by reference to the theory of exhaustion of rights: an exclusive right granted to the proprietor of an intellectual property right is exhausted for the products in question after they are marketed for the first time in the territory of the internal market. As a result, “the proprietor of an industrial or commercial property right protected by the legislation of a Member State may not rely on that legislation in order to oppose the importation of a product which has lawfully been marketed in another Member State by, or with the consent of, the proprietor of the right himself or a person legally or economically dependent on him” . The exercise of intellectual property rights must not restrict the free movement of goods beyond what is required to protect the rights which constitute the specific subject-matter of such a protection. The content of the specific subject-matter depends on the nature of the protected rights. For the proprietor of a patent right, it consists in the exclusive right to use an invention with a view to manufacturing industrial products and putting them into circulation for the first time in the EU territory, either directly or by the grant of licenses to third parties, as well as the right to oppose infringements . The specific subject-matter of trade mark right lies in the exclusive right for its owner to use the trade mark for the purpose of putting products into circulation for the first time and of protecting him against competitors wishing to take advantage of the status and reputation of the trade mark by selling products bearing it . The proprietor of a right on a protected design can prevent third parties from manufacturing and selling or importing, without his consent, products incorporating the design . The regulation on designations of origin protects against improper use of those designations by third parties seeking to profit from the reputation they have acquired .

The distinction between existence/exercise has been maintained as part of the free movement, as the lawful exercise of the intellectual property right is that which correspond to its specific subject-matter: See Case 119/75 Terrapin v Terranova [1976] ECR 1039, LawLex200400003454JBJ: "In the particular situation the requirements of the free movement of goods and the safeguarding of industrial and commercial property rights must be so reconciled that protection is ensured for the legitimate use of the rights conferred by national laws, coming within the prohibitions on imports 'justified' within the meaning of Article 36 of the Treaty, but denied on the other hand in respect of any improper exercise of the same rights of such a nature as to maintain or effect artificial partitions within the common market".

Case 144/81 Keurkoop v Nancy Kean Gifts [1982] ECR 2853, LawLex200500004094JBJ.

Case 15/74 Centrafarm BV and others v Sterling Drug [1974] ECR 1147, LawLex200400003277JBJ.

Case 16/74 Centrafarm BV and others v Winthorp BV [1974] ECR 1183, LawLex200400003449JBJ.

Case C-23/99 Commission v France [2000] ECR I-7653, LawLex200500004918JBJ.

Case C-388/95 Belgium v Spain [2000] ECR I-3123, LawLex200700001644JBJ.

European Business Law

54. Specific subject-matter of intellectual property rights

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

54. Specific subject-matter of intellectual property rights

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise