1 By order of 18 September 1986 which was received at the Court on 20 February 1987, the tribunale civile e penale, Milan, referred to the Court for a preliminary ruling under Article 177 of the EEC Treaty two questions on the interpretation of Articles 30 to 36 and 86 of the EEC Treaty with a view to determining, on the one hand, whether national legislation enabling protective rights to be registered in respect of an ornamental design for car bodywork components is compatible with the Community rules on the free movement of goods and, on the other, whether the exercise of those rights may, in certain circumstances, constitute an abuse .
2 Those questions were raised in proceedings brought by Consorzio italiano della componentistica di ricambio per autoveicoli ( hereinafter referred to as "the Consorzio "), a trade association comprising a number of Italian undertakings which manufacture and market bodywork spare parts for motor vehicles and Maxicar, a member of the Consorzio, against Régie nationale des usines Renault ( hereinafter referred to as "Renault ").
3 Before the national court, the Consorzio and Maxicar seek, on the one hand, a declaration that the protective rights in respect of ornamental designs of which Renault is the proprietor are void, in so far as they relate to spare parts for the bodywork of cars, such parts having no intrinisic aesthetic value of their own, and, on the other, a declaration that the manufacture and marketing of non-original spare parts do not constitute an offence under the national legislation on unfair competition . By way of counterclaim, Renault seeks a declaration that the plaintiff companies have infringed its protective rights .
4 The national court considers that protective rights in respect of an ornamental design for the car bodywork parts are in conformity with Italian law . However, it considers that the exercise of the exclusive rights deriving therefrom appears, in this instance, to be contrary to the provisions of the Treaty .
5 It points out in that connection that a return for the proprietor of the rights is already guaranteed by the exclusive rights in respect of the bodywork as a whole and that protection of separate bodywork components is therefore unjustified . It adds that Renault, which, as is to be expected, receives some of the orders from consumers for components intended for vehicles manufactured by it, enjoys a monopoly which enables it to eliminate competition from independent manufacturers of spare parts, and at the same time to continue to charge high prices .
6 According to the national court, it follows that the protective rights vested in Renault may constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States within the meaning of Article 36 of the Treaty, and that the monopoly thus enjoyed by Renault might possibly contravene Article 86 of the Treaty .
7 The national court therefore decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling : "( 1 ) Are Articles 30 to 36 of the EEC Treaty to be interpreted as prohibiting the proprietor of a protective right in an ornamental design which was granted in a Member State from asserting the corresponding exclusive right so as to prevent third parties from manufacturing and selling, and also exporting to another Member State, component parts which, taken as a whole, make up the bodywork of a car which has already been put on the market, that is to say component parts intended to be sold as spare parts for that car? ( 2 ) Does Article 86 of the EEC Treaty apply so as to prohibit the abuse of the dominant position held by each car manufacturer in the market for spare parts for cars of its manufacture which consists in seeking to eliminate competition from independent manufacturers of spare parts by registering protective rights?"
8 Reference is made to the Report for the Hearing for a fuller account of the facts, the legal background to the case, the procedure and the observations submitted to the Court, which are mentioned or discussed hereinafter only in so far as is necessary for the reasoning of the Court . The first question
9 It is apparent from the order for reference that a number of independent manufacturers of spare parts for cars have invoked the rules on the free movement of goods with a view to persuading the national court not to apply national industrial property legislation under which a car manufacturer may register a protective right in respect of an ornamental design for certain spare parts intended for cars manufactured by it . The independent producers thus sought to protect themselves from infringement proceedings intended to prevent them from manufacturing, for the purposes of sales on the internal market or for export, components covered by the exclusive right in question or to prevent them from importing from other Member States protected components manufactured there without the consent of the proprietor of the protected right in respect of the design .
10 It must first be stated that, as the Court held in its judgment of 14 September 1982 in Case 144/81 Keurkoop v Nancy Kean Gifts (( 1982 )) ECR 2853, with respect to the protection of designs and models, in the present state of Community law and in the absence of Community standardization or harmonization of laws the determination of the conditions and procedures under which such protection is granted is a matter for national rules . It is for the national legislature to determine which products qualify for protection, even if they form part of a unit already protected as such .
11 It should then be noted that the authority of a proprietor of a protective right in respect of an ornamental model to oppose the manufacture by third parties, for the purposes of sale on the internal market or export, of products incorporating the design or to prevent the import of such products manufactured without its consent in other Member States constitutes the substance of his exclusive right . To prevent the application of the national legislation in such circumstances would therefore be tantamount to challenging the very existence of that right .
12 It should also be borne in mind that pursuant to Article 36 restrictions on imports or exports justified on grounds of the protection of industrial and commercial property are permissible provided that they do not constitute a means of arbitrary discrimination or a disguised restriction on trade between the Member States . In that regard it need merely be stated, in the light of the documents before the Court, that the exclusive right granted by the national legislation to the proprietors of protective rights in respect of ornamental models for car bodywork components may be enforced, without distinction, both against those persons who manufacture spare parts within national territory and against those who import them from other Member States, and that such legislation is not intended to favour national products at the expense of products originating in other Member States .
13 Accordingly, it must be stated in reply to the first question that the rules on the free movement of goods do not preclude the application of national legislation under which a car manufacturer who holds protective rights in an ornamental design in respect of spare parts intended for cars of its manufacture is entitled to prohibit third parties from manufacturing parts covered by those rights for the purpose of sale on the domestic market or for exportation or to prevent the importation from other Member States of parts covered by those rights which have been manufactured there without his consent . The second question
14 By its second question, the national court wishes to establish, essentially, whether the obtaining of protective rights in respect of ornamental models for car bodywork components and the exercise of the resultant exclusive rights constitute an abuse of a dominant position within the meaning of Article 86 of the Treaty .
15 It should be noted at the outset that the mere fact of securing the benefit of an exclusive right granted by law, the effect of which is to enable the manufacture and sale of protected products by unauthorized third parties to be prevented, cannot be regarded as an abusive method of eliminating competition .
16 Exercise of the exclusive right may be prohibited by Article 86 if it gives rise to certain abusive conduct on the part of an undertaking occupying a dominant position such as an arbitrary refusal to deliver spare parts to independent repairers, the fixing of prices for spare parts at an unfair level or a decision no longer to produce spare parts for a particular model even though many cars of that model remain in circulation, provided that such conduct is liable to affect trade between Member States .
17 With reference more particularly to the difference in prices between components sold by the manufacturer and those sold by the independent producers, it should be noted that the Court has held ( judgment of 29 February 1968 in Case 24/67 Parke, Davis and Co . (( 1968 )) ECR 55 ) that a higher price for the former than for the latter does not necessarily constitute an abuse, since the proprietor of protective rights in respect of an ornamental design may lawfully call for a return on the amounts which he has invested in order to perfect the protected design .
18 In those circumstances, it must be stated in reply to the second question submitted by the national court that : ( i ) the mere fact of obtaining protective rights in respect of ornamental designs for car bodywork components does not constitute an abuse of a dominant position within the meaning of Article 86 of the Treaty; ( ii ) the exercise of the corresponding exclusive right may be prohibited by Article 86 of the Treaty if it involves, on the part of an undertaking holding a dominant position, certain abusive conduct such as the arbitrary refusal to supply spare parts to independent repairers, the fixing of prices for spare parts at an unfair level or a decision no longer to produce spare parts for a particular model even though many cars of that model are still in circulation, provided that such conduct is liable to affect trade between Member States .