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	Databáze č. 17 : Databáze judikatury

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	Číslo (Kód CELEX): Number (CELEX Code):		61975J0119

	Název: Title:		JUDGMENT OF THE COURT OF 22 JUNE 1976. TERRAPIN (OVERSEAS) LTD. V TERRANOVA INDUSTRIE CA KAPFERER AND CO.. PRELIMINARY RULING REQUESTED BY THE BUNDESGERICHTSHOF. RIGHT TO A TRADE-MARK AND COMMERCIAL NAME. CASE 119-75.

	Publikace: Publication:		REPORTS OF CASES 1976 PAGES 1039 - 1064

	Předmět (klíčová slova): Keywords		FREE MOVEMENT OF GOODS;MEASURES HAVING EQUIVALENT EFFECT;INDUSTRIAL AND COMMERCIAL PROPERTY;

	Související předpisy: Corresponding acts:		157E036

	Odkaz na souvisejicí judikáty: Corresponding Judgements:		Centrafarm I Case 15/74 Centrafarm v Sterling Drug [1974] ECR 1147 · [233] membran Joined Cases membran and K-tel v GEMA [1981] ECR 147 · [259] Polydor Case 270/80 Ploydor and RSO v Harlequin [1982] ECR 329


	Plný text: Fulltext:		Ne

Fakta:
Terranova Industrie C.A. Kapferer & Co. (hereinafter: “Terranova”) is the proprietor in the Federal Republic of Germany of the trade-marks “Terra”, “Terra Fabrikate” and “Terranova”, registered at the German patents office, the last of these names being simultaneously used as a commercial name. It manufactures and markets finished plaster for façades and other construction materials under these names. Terrapin (Overseas) Ltd. (“Terrapin”)is an English company specializing in the production of prefabricated houses and components for the construction of such houses which it sells under the name “Terrapin”, which is at the same time its commercial name. When terrapin applied to the German patents office to register the trade-mark “Terrapin”, Terranova lodged an opposition an by order of the Bundespatentgericht registration was refused on the ground of risk of confusion of the trademarks “Terra” and “Terranova”. Subsequently Terranova brought an action before the Civil Courts to prohibit Terrapin from using the name “Terrapin” on its products. In the final instance, the Bundesgerichtshof (Federal Supreme Court), contending that the action was well-founded under German law, decided to stay the proceedings and under Article 177 of the Treaty to refer to the Court of Justice the question whether it is compatible with Article 30, 36 of the Treaty that an undertaking established in Member State A, by using its commercial name and trade-mark rights existing there, should prevent the import of similar goods of an undertaking established in Member State B if these goods have been lawfully given a distinguishing name which may be confused with the commercial name and trade-mark which are protected in State A for the undertaking established there, if there are no relations between the two undertakings, if their national trade-mark rights arose autonomously and independently of another (no common origin) and at the present time there exist no economic or legal relations of any kind other than those appertaining to trade-marks between the undertakings.

Názor soudu a komentář:
The Court assumes that the restriction resulting from the trade-mark right in question would constitute a “measure having an effect equivalent to import restrictions” prohibited by Article 30 of the Treaty. It therefore examines whether such restriction can be justified under Article 36 of the Treaty. This article provides for certain exceptions to the free movement of goods which relate, inter alia, to law of industrial and commercial property. Restrictions to the free movement of goods resulting from measures which are intended to protect industrial and commercial property are, pursuant to Article 36, compatible with the Treaty. “However, it is clear from the same article, in particular the second sentence, as well as from the context, that whilst the Treaty does not affect the existence of rights recognized by the legisaltion of a Member State in matters of industrial and commercial property, yet the exercise of those rights may nevertheless, depending on the circumstances, be restricted by the prohibitions in the Treaty.”The exception the general principle of free movement of goods contained in Article 36 must be, as the Court had already set out in prior judgements (cf. in particular [88] Centrafarm I), determined with regard to the specific subject matter of the right concerned. The subject matter of the trade-mark is, as the Court finds, “to guarantee to consumers that the product has the same origin” and, as may be added, to protect the name of a product which the proprietor has developed. It follows, first, that the proprietor cannot rely on the trade-mark in order to prevent the importation of a product which has been lawfully marketed in another Member State by the proprietor himself or (by way of licence) with his consent (see also [233] GEMA; [259] Polydor). “It is the same when the right relied on is the result of the subdivision, either by voluntary act or as a result of public constraint, of a trade-mark right which originally belonged to one and the same proprietor.” In both cases, the trade-mark right is already exhausted, either because the proprietor has consented to its use by a third party or because its subdivision has been statutorily ordered. Finally, the proprietor may not rely on its industrial or commercial property right conferred by national law “when the exercise of those rights is the purpose, the means or the result of an agreement prohibited by the Treaty”. While the first two limitations to the industrial or commercial property right are, in particular, based on the proprietor’s consent, this latter limitation takes account of the systematic context of Article 36 according to which it cannot be accepted that this provision be invoked for purposes which contravene Community law. The Court summarizes: “In all these cases the effect of invoking the territorial nature of the national laws protecting industrial and commercial property is to legitimize the insulation of national markets without this partitioning within the common market being justified by the protection of a legitimate interest on the part of the proprietor of the trade-mark or business name.”“On the other hand in the present state of Community law an industrial or commercial property right legally acquired in a Member State may legally be used to prevent under the first sentence of Article 36 of the Treaty the import of products marketed under a name giving rise to confusion where the rights in question have been acquired by different and independent proprietors under different national laws. If in such a case the principle of the free movement of goods were to prevail over the protection given by the respective national laws, the specific object of industrial and commercial property would be undermined. 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 nature as to maintain or effect artificial partitions within the common market.”A trade-mark may therefore, in principle, be invoked by its proprietor in order to prevent the import of goods form other Member States. It may not be relied upon if, pursuant to the proprietor’s consent or legislative measures (“subdivision”) the trade-mark right has already been exhausted by its holder or if he seeks to employ it for purposes which are incompatible with the Treaty; in these cases, the proprietor does not, under Community law, have a legitimate interest in prohibiting the import.

Shrnutí (Summary of the Judgment):
1. IT IS CLEAR FROM ARTICLE 36 OF THE EEC TREATY, IN PARTICULAR THE SECOND SENTENCE, AS WELL AS FROM THE CONTEXT, THAT WHILST THE TREATY DOES NOT AFFECT THE EXISTENCE OF RIGHTS RECOGNIZED BY THE LEGISLATION OF A MEMBER STATE IN MATTERS OF INDUSTRIAL AND COMMERCIAL PROPERTY, YET THE EXERCISE OF THOSE RIGHTS MAY NEVERTHELESS, DEPENDING ON THE CIRCUMSTANCES, BE RESTRICTED BY THE PROHIBITIONS IN THE TREATY. INASMUCH AS IT PROVIDES AN EXCEPTION TO ONE OF THE FUNDAMENTAL PRINCIPLES OF THE COMMON MARKET, ARTICLE 36 IN FACT ADMITS EXCEPTIONS TO THE FREE MOVEMENT OF GOODS ONLY TO THE EXTENT TO WHICH SUCH EXCEPTIONS ARE JUSTIFIED FOR THE PURPOSE OF SAFEGUARDING RIGHTS WHICH CONSTITUTE THE SPECIFIC SUBJECT-MATTER OF THAT PROPERTY. IT FOLLOWS FROM THE ABOVE THAT THE PROPRIETOR OF AN INDUSTRIAL OR COMMERCIAL PROPERTY RIGHT PROTECTED BY THE LAW OF A MEMBER STATE CANNOT RELY ON THAT LAW TO PREVENT THE IMPORTATION OF A PRODUCT WHICH HAS LAWFULLY BEEN MARKETED IN ANOTHER MEMBER STATE BY THE PROPRIETOR HIMSELF OR WITH HIS CONS
ENT. IT IS THE SAME WHEN THE RIGHT RELIED ON IS THE RESULT OF THE SUBDIVISION, EITHER BY VOLUNTARY ACT OR AS A RESULT OF PUBLIC CONSTRAINT, OF A TRADE-MARK WHICH ORIGINALLY BELONGED TO ONE AND THE SAME PROPRIETOR. EVEN WHERE THE RIGHTS IN QUESTION BELONG TO DIFFERENT PROPRIETORS THE PROTECTION GIVEN TO INDUSTRIAL AND COMMERCIAL PROPERTY BY NATIONAL LAW MAY NOT BE RELIED ON WHEN THE EXERCISE OF THOSE RIGHTS IS THE PURPOSE, THE MEANS OR THE RESULT OF AN AGREEMENT PROHIBITED BY THE TREATY.

2. IT IS COMPATIBLE WITH THE PROVISIONS OF THE EEC TREATY RELATING TO THE FREE MOVEMENT OF GOODS FOR AN UNDERTAKING ESTABLISHED IN A MEMBER STATE, BY VIRTUE OF A RIGHT TO A TRADE-MARK AND A RIGHT TO A COMMERCIAL NAME WHICH ARE PROTECTED BY THE LEGISLATION OF THAT STATE, TO PREVENT THE IMPORTATION OF PRODUCTS OF AN UNDERTAKING ESTABLISHED IN ANOTHER MEMBER STATE AND BEARING BY VIRTUE OF THE LEGISLATION OF THAT STATE A NAME GIVING RISE TO CONFUSION WITH THE TRADE-MARK AND COMMERCIAL NAME OF THE FIRST UNDERTAKING, PROVIDED THAT THERE ARE NO AGREEMENTS RESTRICTING COMPETITION AND NO LEGAL OR ECONOMIC TIES BETWEEN THE UNDERTAKING AND THAT THEIR RESPECTIVE RIGHTS HAVE ARISEN INDEPENDENTLY OF ONE ANOTHER.

3. AN ALLEGATION BY ONE UNDERTAKING AS TO THE SIMILARITY OF PRODUCTS ORIGINATING IN DIFFERENT MEMBER STATES AND THE RISK OF CONFUSION OF TRADE-MARKS OR COMMERCIAL NAMES LEGALLY PROTECTED IN THESE STATES MAY PERHAPS INVOLVE THE APPLICATION OF COMMUNITY LAW WITH REGARD IN PARTICULAR TO THE SECOND SENTENCE OF ARTICLE 36 OF THE TREATY. IT IS FOR THE COURT OF FIRST INSTANCE, AFTER CONSIDERING THE SIMILARITY OF THE PRODUCTS AND THE RISK OF CONFUSION, TO ENQUIRE FURTHER IN THE CONTEXT OF THIS LAST PROVISION WHETHER THE EXERCISE IN A PARTICULAR CASE OF INDUSTRIAL AND COMMERCIAL PROPERTY RIGHTS MAY OR MAY NOT CONSTITUTE A MEANS OF ARBITRARY DISCRIMINATION OR A DISGUISED RESTRICTION ON TRADE BETWEEN MEMBER STATES.

Plný text judikátu (Entire text of the Judgment):