Source: EURLEX
Language: en
Format: md

[**Avis juridique important**](../../../editorial/legal_notice.htm)

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# 61975J0119

**Judgment of the Court of 22 June 1976. - Société Terrapin (Overseas) Ltd. v Société Terranova Industrie CA Kapferer & Co. - Reference for a preliminary ruling: Bundesgerichtshof - Germany. - Right to a trade-mark and commercial name. - Case 119-75.** 
  
*European Court reports 1976 Page 01039  
 Greek special edition Page 00383  
 Portuguese special edition Page 00419  
 Spanish special edition Page 00365  
 Swedish special edition Page 00127  
 Finnish special edition Page 00135*

  

[Summary](#SM)  
[Parties](#I1)  
[Subject of the case](#I2)  
[Grounds](#MO)  
[Decision on costs](#CO)  
[Operative part](#DI)

## Keywords

  
*1 . FREE MOVEMENT OF GOODS - INDUSTRIAL AND COMMERCIAL PROPERTY - RIGHTS - PROTECTION - SCOPE - EXISTENCE OF RIGHTS - EXERCISE OF RIGHTS - PROHIBITIONS IN THE TREATY - EXCEPTIONS TO THE PRINCIPLE OF FREE MOVEMENT - LIMITATIONS

( EEC TREATY , ARTICLE 36 )

2 . FREE MOVEMENT OF GOODS - INDUSTRIAL AND COMMERCIAL PROPERTY - RIGHTS - TRADE-MARK - COMMERCIAL NAME - PROTECTION - PRODUCTS OF AN UNDERTAKING OF A MEMBER STATE BEARING , BY VIRTUE OF THE LEGISLATION OF THAT STATE , A NAME GIVING RISE TO CONFUSION WITH THE TRADE-MARK AND NAME OF AN UNDERTAKING OF ANOTHER MEMBER STATE - IMPORTATION - OPPOSITION - ADMISSIBILITY - CONDITIONS

( EEC TREATY , ARTICLE 36 )

3 . FREE MOVEMENT OF GOODS - INDUSTRIAL AND COMMERCIAL PROPERTY - RIGHTS - EXERCISE - SIMILARITY OF PRODUCTS ORIGINATING IN DIFFERENT MEMBER STATES - RISK OF CONFUSION - ASSESSMENT - JURISDICTION OF THE NATIONAL COURT - APPLICATION OF COMMUNITY LAW

( EEC TREATY , ARTICLE 36 )*

## Summary

  
*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 CONSENT . 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 .*

## Parties

  
*IN CASE 119/75

REFERENCE TO THE COURT UNDER ARTICLE 177 OF THE EEC TREATY BY THE BUNDESGERICHTSHOF ( FEDERAL COURT OF JUSTICE ) FOR A PRELIMINARY RULING IN THE ACTION PENDING BEFORE THAT COURT BETWEEN

TERRAPIN ( OVERSEAS ) LTD ., OF BLETCHLEY , BUCKINGHAMSHIRE ( ENGLAND )

AND

TERRANOVA INDUSTRIE C . A . KAPFERER & CO ., OF FREIHUNG , OBERPFALZ ( FEDERAL REPUBLIC OF GERMANY ),*

## Subject of the case

  
*ON THE INTERPRETATION OF THE PROVISIONS OF THE EEC TREATY ON THE FREE MOVEMENT OF GOODS AND IN PARTICULAR ARTICLES 30 AND 36 THEREOF WITH REGARD TO TRADE-MARK LAW ,*

## Grounds

[Top](#document1)