Keywords

Summary



Keywords

1. Free movement of goods ° Quantitative restrictions ° Measures having equivalent effect ° Concept ° Proprietor of a trade mark in one Member State prohibited from using it to market a type of product ° Prohibition on marketing products of the same type and bearing the same trade mark, which come from another Member State

(EC Treaty, Art. 30)

2. Free movement of goods ° Quantitative restrictions ° Measures having equivalent effect ° Lawful marketing in a Member State of a type of product under a particular trade mark ° Prohibition on importation and marketing under that trade mark in another Member State ° Prohibition binding solely on the only undertaking using its right to import ° Not permissible ° Justification ° Protection against unfair competition ° None ° Prohibition affecting all traders ° Permissible ° Justification ° Protection of consumers against the misleading effect of the trade mark ° Conditions

(EC Treaty, Arts 30 and 36)

3. Approximation of laws ° Trade marks ° Directive 89/104 ° Lawful use of a trade mark in a Member State in order to market a type of product ° Prohibition in another Member State on the use of that trade mark to market the same type of products ° Whether permissible ° Justification ° Use of the trade mark by its proprietor prohibited because of its misleading effect

(Council Directive 89/104, Art. 12(2)(b))

Summary

1. Where, in one Member State, the proprietor of a trade mark is prohibited from marketing a type of product under that trade mark, an order requiring an undertaking which imports the same type of product bearing the same trade mark from another Member State to cease marketing those products constitutes a measure having equivalent effect to a quantitative restriction on imports within the meaning of Article 30 of the Treaty. In such a situation, traders who wish to market products under the trade mark in question may obtain those products only by importing them, so that an injunction prohibiting the marketing of those products amounts, in practice, to an impediment to their importation and therefore constitutes an obstacle to intra-Community trade.

2. Articles 30 and 36 of the Treaty are to be interpreted as precluding reliance on protection against unfair competition as a ground for prohibiting an undertaking from using its right to import into a Member State products coming from another Member State where they are lawfully marketed and to market them under a particular trade mark in the Member State of importation, when other traders have the same right, even if they do not use it.

On the other hand, Articles 30 and 36 of the Treaty do not preclude a prohibition, adopted to protect consumers against the misleading effect of a particular trade mark, on the marketing by all traders of products coming from a Member State where they are lawfully marketed, provided that the prohibition is necessary in order to ensure consumer protection and proportionate to that objective, which must be incapable of being achieved by measures which are less restrictive of intra-Community trade. When assessing whether those conditions are fulfilled, the national court must, in particular, examine whether the risk of misleading consumers is sufficiently serious to be able to override the requirements of the free movement of goods. It is possible that because of linguistic, cultural and social differences between the Member States a trade mark which is not liable to mislead a consumer in one Member State may be liable to do so in another.

3. Article 12(2)(b) of Directive 89/104, the first directive approximating the laws of the Member States relating to trade marks, is to be interpreted as not precluding a prohibition on the marketing of products coming from a Member State where they are lawfully marketed, on the ground that they bear a trade mark which the proprietor has been specifically prohibited from using in the Member State of importation because it has been held there to be liable to mislead consumers. The directive leaves it to the Member States to determine whether and to what extent the use of a revoked trade mark must be prohibited.