Generics (UK) Ltd and Harris Pharmaceuticals Ltd v Smith Kline & French Laboratories Ltd.
Date: 1992-10-27
20 Such a practice is discriminatory because it encourages proprietors of patents to manufacture patented products within the national territory rather than to import them from other Member States. It is therefore capable of hindering intra-Community trade directly or indirectly, actually or potentially, and hence constitutes a measure having equivalent effect to quantitative restrictions on imports within the meaning of Article 30 of the Treaty (judgment in Case 8/74 Dassonville [1974] ECR 837, paragraph 5).
21 Under Article 36 of the Treaty prohibitions and restrictions on imports justified on grounds relating to the protection of industrial and commercial property are permitted by that article on the express condition that they shall not constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.
22 As the Court has consistently held, where Article 36 is relied upon to protect industrial and commercial property, it permits derogations from the fundamental principle of the free movement of goods within the common market only in so far as such derogations are justified for the purpose of safeguarding rights which constitute the specific subject-matter of such property (see in particular the judgment in Case C-10/89 HAG [1990] ECR 1-3711, paragraph 12).
23 In the case of patents, the specific subject-matter of the industrial property is, in particular, the exclusive right of the patent proprietor to use an invention with a view to manufacturing industrial products and putting them into circulation for the first time, either directly or by the grant of licences to third parties, and also the right to oppose infringements (see in particular the abovementioned judgment in Commission v United Kingdom, paragraph 21).
25 Such a consideration, the effect of which is to frustrate the objectives of the Community as laid down in particular in Article 2 and specified in Article 3 of the Treaty, cannot be accepted as justification for a restriction on trade between Member States (abovementioned judgment in Commission v United Kingdom, paragraph 30).
31 It follows that the principles laid down by the Court on the basis of Articles 30 and 36 of the Treaty are applicable to trade between the Community and the two new Member States. The Court has consistently held that the proprietor of an industrial or commercial property right protected by the legislation of a Member State cannot rely upon that legislation to prevent the importation of a product which has been lawfully marketed in another Member State by the proprietor himself or with his consent. The Court has inferred from that principle that an inventor, or someone deriving rights from him, cannot invoke the patent which he holds in one Member State to prevent the importation of a product freely marketed by him in another Member State where the product is not patentable (judgment in Case 187/80 Merck [1981] ECR 2063, paragraphs 12 and 13).
41 Such an interpretation is consistent with the purpose of Articles 47 and 209 of the Act of Accession, namely to derogate in a limited area from the Community rules governing the free movement of goods and not to create new rights exceeding the protection conferred on the patent by national law.