3.

The key to the problem raised by the national court in its first question lies in Anide 36 of the Treaty of Rome. It is acknowledged — and it was recently confirmed by the Court in its judgment in Case 102/77 to which I have already referred — that that provision, which lays down an exception to the principle of the free movement of goods (and in particular to Article 30), allows inter alia prohibitions or restrictions on imports which are justified on grounds of the protection of industrial and commercial property; however, the exception extends no further than safeguarding the rights which constitute the specific subject-matter of that property. It is equally jus receptum that the specific subject-matter of a trade-mark consists in guaranteeing to its proprietor the exclusive right to use it with regard to a given product, to be the first to put it on the market and thus to protect it against competitors who may wish to take advantage of the status and reputation of the trade-mark by selling products illegally bearing that mark (paragraph 7 of the decision in the above-mentioned judgment). Finally, an essential function of a trade-mark is acknowledged to be to guarantee to the consumer the identity of origin of the prod un in such a way that it should not be confused with others of different ongin (see the above-mentioned judgment). Centrafarm, invoking that same essential function of a trade-mark, states that the substitution of the mark Seresta for the mark Serenid cannot bring about any confusion with regard to the ongin of the prod un since it is manufactured under either one name or the other by undertakings belonging to the group run by the sole proprietor of both trade-marks. Accordingly the prohibition which American Home Products has imposed on Centrafarm as regards the use in the Netherlands of the trade-mark of which the firstmentioned undertaking is the proprietor in that country for the designation of oxazepamum produced by the British licensee of American Home Products cannot be justified from the point of view of the protection of the essential function of the trade-mark. Such a prohibition serves solely to defend the goodwill of the trade-mark on the Netherlands market, that is to protect the commercial and publicity function of the trade-mark itself to the exclusive benefit of American Home Products. However, having regard to the case-law of the Court of Justice, that would transgress the bounds of the protection of a trade-mark allowed by Article 36. First, and irrespective of the question of the protection of the goodwill, or rather of the reputation of the product as distinct from that of the trade-mark, it seems to me in reality that we must deal with the question of the relationship between the guarantee of origin and hence of the authenticity of the product on the one hand and the anual identificatory function of the trademark on the other. In my view these are two inseparable aspects of the same function; this moreover is the way in which the Court considered it when it referred to a guarantee of the identity of the origin of the goods to which the mark was applied. When we say that a manufacturer's trade-mark guarantees the origin of the produn we place the accent on the connexion between the product and the manufacturer which the trade-mark, owing to its exclusive nature, makes it possible to determine; when we sute that the trade-mark identifies the product we are emphasizing the connexion between the trade-mark and the produrt: that specific product the identity of which springs not so much from the material or the appearance (which may be common to other products of the same kind) as from the fan above all that the proprietor of the trade-mark has ‘baptized’ it by means of the mark. Conferring this identity on the product is of course intended as a guarantee of its origin. It is beyond doubt that whoever ‘baptizes’ the product and then becomes the proprietor of the relevant trade-mark acquires an exclusive industrial or commercial property right: this prevents third parties from giving a different name to the same product, even if such a name corresponds (as in this case) to another trade-mark belonging to the same proprietor. Hence third parties cannot sell under the latter trade-mark a product which, whilst originating with the proprietor in question (or having been manufactured with his consent by an undertaking controlled by him) has not been thus affixed by him. If a manufacturer decides to put into circulation pan of his production without any trade-mark it is certainly not lawful for a third party to apply to it the mark with which the same manufacturer normally marks his products. The same must apply in a case in which the producer marks with two separate trade-marks in the same Sute two products which are substantially identical. It may be said that in a case like that under consideration here each of the trade-marks of the same proprietor, apart from guaranteeing to the consumer the origin of the product, serves also to distinguish on the commercial plane each of the products separately marked by their manufacturer. In my view this function too, which the Court has not hitherto had the opportunity to consider, deserves protection as it is closely linked with the logic of the right to the trade-mark. The substitution, at the hands of an unauthorized third party, of one trademark by another trade-mark belonging to the same manufacturer represents an interference with the option to which the proprietor of the two marks is entitled to use either of them to distinguish his products in the eyes of his customers. Hence, even at Community level, it must be regarded in principle as an unlawful use of the trade-mark ‘intended to take advantage of the status’ of the undertaking and the ‘reputation of the trade-mark’ (to use the words employed by the Court in the judgment of 31 October 1974 in Case 16/74 Centrafarm v Winthrop [1974] ECR 1183). It seems unnecessary to linger at this point over the further question whether or not the protection of the reputation acquired by the product is one of the essential functions of a trade-mark. Certainly the Commission is right when it observes that the protection of reputation may be invoked to stop parallel imports, which would be contrary to the case-law of the Court; in fan it may be said that any parallel importer is taking advantage of the reputation of somebody else's trade-mark. How should we explain then that taking advantage of the reputation was taken into consideration by the Court in the passage referred to above in the Winthrop judgment (as in paragraph 7 of the above-mentioned judgment in Case 102/77 Hoffmann-La Roche v Centrafarm)} I think the reply may be that the Court did not in fan include the protection of reputation in the essential function of a trade-mark; it simply stated that the unlawful use of a trade-mark by third parties (or the fan of affixing it improperly) may be regarded as a means of taking advantage of the reputation of the trade-mark itself. This does not prejudice the problem of deciding in what the unlawful use of the trade-mark consists, and it is not necessary to repeat that in the present case such an abuse consists in having usurped that power to identify the product which belongs exclusively to the proprietor of the trade-mark.