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

Although Article 36 only expressly covers industrial and commercial property, the European courts interpret it largely by applying it to patents, trade marks, and designs and models , but also to copyrights and related rights, as well as to designations of origin and indications of provenance . 
1) Patents
The principle of free movement of goods prevents the patentee from ensuring that a product p …

Applications

Although Article 36 only expressly covers industrial and commercial property, the European courts interpret it largely by applying it to patents, trade marks, and designs and models , but also to copyrights and related rights, as well as to designations of origin and indications of provenance . 

The principle of free movement of goods prevents the patentee from ensuring that a product protected by the patent is not imported where it has been put onto the market in a legal market, by the patentee himself or with his consent, in another Member State , even a State where the product is not patentable . By contrast, the patentee cannot be deemed to have consented to the operation of the holder of a compulsory license granted by the competent authorities of a Member State . Likewise, a car manufacturer who holds a patent in respect of an ornamental design for certain spare parts intended for cars manufactured by it, may, on the basis of national provisions, prevent third parties from manufacturing, for the purposes of sales on the internal market or for export, protected spare parts or prevent them from importing from other Member States protected spare parts manufactured there without its consent . By contrast, national legislation cannot restrict the grant of compulsory licenses to the working of the patent by importation from other Member States and not by way of production in the national territory , or deny the licensee the right to authorize the import of the patented product from non-member countries where the proprietor of the patent manufactures the product within the national territory although it grants that authorization where that proprietor works the patent by importing the product from other Member States .

Beyond the specific subject-matter, the proprietor of a trademark right may prevent a product from being imported into its territory where it has put that product into circulation and where the importing third party has adopted conduct making it impossible for consumers to identify with certainty the origin of the marked product . The proprietor of a trade mark may thus prevent a product to which the trade mark has been lawfully applied from being marketed in a Member State after it has been repackaged in a new packaging, to which the trade mark has been affixed by a third party, provided that the proprietor has not received prior notice of the marketing of the repackaged product, that the use of the trade mark right, having regard to the marketing system adopted, contributes to the partitioning of the markets between Member States, that the repackaging adversely affects the original condition of the product and that it is not stated on the new packaging by whom the product has been repackaged . Therefore, it cannot prevent an importer from marketing a repackaged product where the repackaging merely consists in replacing the outer wrapping without touching the internal packaging and by making the trade mark affixed by the manufacturer on the internal packaging visible through the new external wrapping, which clearly indicates that the product has been manufactured by the subsidiary of the proprietor and repackaged by the importer , provided that the new packaging does not damage the reputation of the product or of the proprietor of the trade mark . If the repackaging is explicable solely by the attempt to secure a commercial advantage and is not objectively necessary, the proprietor of the trade mark may oppose it .

National legislation which allows a copyright management society to invoke those rights where sound recordings are distributed on the national market, in order to claim payment of a fee equal to the royalties ordinarily paid for marketing on the national market less the lower royalties paid in the Member State of manufacture, is contrary to Articles 34 and 36 TFEU . By contrast, the proprietor of a copyright in a Member State can prevent the sale of sound recordings incorporating the same musical works in the territory of that State where those recordings are imported from another Member State in which their marketing results from the expiration during which they are protected, and not its consent . Likewise, a Member State may bring a prosecution for the offense of aiding and abetting the prohibited distribution of copyright-protected works where such works are distributed to the public on the territory of the Member State in the context of a sale, aimed specifically at the public of that State, concluded in another Member State where those works are not protected by copyright or the protection conferred on them is not enforceable as against third parties . In all cases, the requirements relating to the free movement of goods and the freedom to provide services must be reconciled with the observance of copyright in order to allow copyright owners, or the societies empowered to act as their agents, to invoke their exclusive rights in order to require the payment of royalties for music played in public by means of a sound recording, where the marketing cannot give rise to the charging of any royalty .

4) Designations of origin/indication of provenance

The specific function of designations of origin is to guarantee the origin of a product . After initially being regarded by the European court from the mandatory requirement angle , the protection of designations of origin was then assessed from the point of view of intellectual property . Thus, a designation of origin cannot be reserved to wines bottled in the region of production where the operation does not endow it with particular characteristics or is not essential in order to maintain the specific characteristics acquired by it . On the contrary, to use a designation of origin, the obligation for processing and packaging to be carried out in the region of production is lawful where it allows the persons entitled to use it to keep under their control the way in which the product appears on the market and better safeguard the quality and authenticity of the product . In any event, to benefit from intellectual property rights, the designation of origin must be issued on the basis of objective criteria ensuring that the high quality of the product can be guaranteed .

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

Case C-47/90 Delhaize Frères v Promalvin and others [1992] ECR I-3669, LawLex200900000967JBJ; Case C-3/91 Exportur v LOR and Confiserie du Tech [1992] ECR I-5529, LawLex200500006035JBJ; Case C-388/95 Belgium v Spain [2000] ECR I-3123, LawLex200700001644JBJ; Case C-108/01 Consorzio del Prosciutto di Parma and Salumificio S. Rita [2003] ECR I-5121, LawLex200900000349JBJ.

Case 1/81 Pfizer v Eurim-Pharm [1981] ECR 2913, LawLex200500004093JBJ.

Cases C-71/94 C-72/94, C-73/94, Eurim-Pharm Arzneimittel v Beiersdorf and others [1996] ECR I-3603, LawLex200500005134JBJ.

Case C-379/97 Upjohn [1999] ECR I-6927, LawLex200500005075JBJ.

Case 55/80 Musik-Vertrieb Membran GmbH v GEMA [1981] ECR 147, LawLex200500004085JBJ; Case 402/85 Basset v SACEM [1987] ECR 1747, LawLex200400002948JBJ.

Case 341/87 EMI Electrola v Patricia Im- und Export and others [1989] ECR 79, LawLex200500004561JBJ.

Case C-5/11 Donner, LawLex201200001764JBJ.

Case 395/87 Criminal proceedings against Tournier [1989] ECR 2521, LawLex200400002927JBJ.

On the concept of geographical indication of provenance, see Case C-478/07 Budejovicky Budvar [2009], LawLex201100000362JBJ, which specifies that a name which is not in itself a geographical name but is capable of informing the consumer that the product bearing that indication comes from a particular place, region or country can be considered as a simple and indirect indication of geographical provenance.

Case 12/74 Commission v Germany [1975] ECR 181, LawLex200900001508JBJ, based on the protection of consumers and fair trading.

Case C-3/91 Exportur v LOR and Confiserie du Tech [1992] ECR I-5529, LawLex200900002087JBJ, which states that the protection of indications of provenance and designations of origin can be justified for the purpose of safeguarding rights which constitute the specific subject-matter of such property provided that the names in question have not become generic in the country of origin.

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

Case C-47/90 Delhaize Frères v Promalvin and others [1992] ECR I-3669, LawLex200900000967JBJ; Case C-388/95 Kingdom of Belgium v Spain [2000] ECR I-3123, LawLex200700001644JBJ.

Case C-108/01 Consorzio del Prosciutto di Parma v Asda [2003] ECR I-5121, LawLex200900000349JBJ, Case C-469/00 Ravil SARL [2003] ECR I-5053, LawLex200400003420JBJ.

Case C-161/09 Kakavetsos-Fragkopoulos AE Epexergasias kai Emporias Stafidas [2011] pending case, LawLex201100000891JBJ.

Case 187/80 Merck v Stephar and Exler [1981] ECR 2063, LawLex200500004080JBJ.

Case 19/84, Pharmon v Hoechst [1985] ECR 2281, LawLex200500004429JBJ.

Case 53/87 CICRA and others v Renault [1988] ECR 6039, LawLex200400002942JBJ.

Case C-235/89 Commission v Italy [1992] ECR I-777, LawLex200500004823JBJ.

Case C-191/90 Generics and Harris Pharmaceuticals v Smith Kline and French Laboratories [1992] ECR I-5335, LawLex200500004824JBJ.

Case C-3/78 Centrafarm [1978] ECR 1823, LawLex200500004082JBJ.

Case 102/77 Hoffman-La Roche v Centrafarm [1978] ECR 1139, LawLex200400002972JBJ.

European Business Law

56. Applications

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

56. Applications

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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