Súdny dvor Európskej únie·Rozsudok·16.3.1978

C-135/77

ECLI:EU:C:1978:75

Súd: Súdny dvor Európskej únie
IČS: 61977CJ0135
Zdroj: eur-lex.europa.eu ↗

JUDGMENT OF THE COURT (FIRST CHAMBER) OF 16 MARCH 1978 1

Robert Bosch GmbH ν Hauptzollamt Hildesheim (preliminary ruling requested by the Finanzgericht Hamburg)

Case 135/77

1. Questions referred for a preliminary ruling — Judgment — Operative part — Inter pretation — Reference to the grounds ofjudgment (EEC Treaty, Art 177)

2. Common Customs Tariff — Valuation of goods for customs purposes — Determi nation — Normal price of goods — Value of a patent for a process — Inclusion — Conditions (Regulation No 803/68 of the Council, Art 3)

1. The operative part of an interpre value of a patent for a process where tative judgment given on the basis of the protected process is inseparably Article 177 of the Treaty must be embodied in the goods. This is the understood in the light of the case where the carrying out of the grounds of judgment. process constitutes the only 2. Article 3 (1) (a) of Regulation No economically viable use of the goods 803/68 of the Council is to be and where the process may only be interpreted as meaning that the put into effect by the use of those normal price of goods includes the goods.

In Case 135/77

REFERENCE to the Court under Article 177 of the EEC Treaty by the Finanzgericht Hamburg for a preliminary ruling in the action pending before that court between:

Robert Bosch GmbH, Gerlingen-Schillerhöhe

and

Hauptzollamt Hildesheim (Hildesheim Principal Customs Office)

1 — Language of the Case : German

JUDGMENT OF 16. 3. 1978 — CASE 135/77

on the interpretation of Article 3 (1) (a) of Regulation (EEC) No 803/68 of the Council of 27 June 1968 on the valuation of goods for customs purposes (Official Journal, Englisch Special Edition 1968 (I), p. 170) and of the judgment given by the Court of Justice on 14 July 1977 in Case 1/77,

THE COURT (First Chamber)

composed of: G. Bosco, President of Chamber, A. M. Donner and A. O'Keeffe, Judges,

Advocate General: J.-P. Warner Registrar: A. Van Houtte

gives the following

JUDGMENT

Facts and Issues

The facts of the case, the procedure and (c) are imported for sale, other the observations submitted under Article disposal or use under a foreign 20 of the Protocol on the Statute of the trade-mark, Court of Justice of the EEC may be summarized as follows : the normal price shall be determined on the assumption that it includes the value of the right to I — Facts and procedure use the patent, design or trade mark in respect of the goods. This 1. The parties in the main action provision shall also apply in the case disagree as to the interpretation of of copyright of any other Artide 3 (1) (a) of Regulation (EEC) intellectual or industrial property No 803/68 of the Council which right". provides that: By judgment given on 14 July 1977, "1. When the goods to be valued [1977] ECR 1473, the Court of Justice (a) are manufactured in accordance (First Chamber), in answer to the with any patented invention or request for a preliminary ruling referred are goods to which any to it by the Finanzgericht Hamburg, protected design has been ruled that: Article 3 (1) (a) of Regu applied; or lation No 803/68 of the Council is to (b) are imported under a trade be interpreted as meaning that the mark; or normal price of goods includes the

BOSCH v HAUPTZOLLAMT HILDESHEIM

value of a patent for a process where put into effect only by the use of those the protected process is inseparably goods, or is the value of the patent for a embodied in and constitutes the only process also to be included in the economically viable use of the goods. normal price if, although the only economically viable use of those goods 2. During the public hearing of the consists in the carrying out of the Finanzgericht which took place after the process, the process can also be used in judgment of the Court of Justice was connexion with other types of goods?" given it was declared that the patent for The order of the Finanzgericht was a process (Verfahrenspatent) which entered in the Court Register on 8 forms the basis of the dispute may be November 1977.

Written observations used not only in the goods which form were submitted under Article 20 of the the subject-matter of the dispute but Protocol on the Statute of the Court of also in other machines which may be Justice of the EEC by the plaintiff in the manufactured without using the patent main action, represented by Mr Uhl, for a product (Sachpatent) whereby and by the Commission of the European those goods were manufactured. Communities, represented by Manfred The plaintiff in the main action main Beschel, member of the Legal Service of tained that the value of a patent for a the Commission. process may not be included in the The Court, after hearing the report of normal price where the patent for a the Judge Rapporteur and the views of process may also be used for machines the Advocate General, decided to open of a type different from the imported the oral procedure without a

machine. It considers that in such a case preparatory inquiry. the patent for a process is not embodied in the machine. By order of 1 February 1977, the Court, in pursuance of Article 95 (1) of the The defendant in the main action Rules of Procedure, decided to refer the claimed that in that case the patent for a case to the First Chamber. process is embodied in the goods. In its opinion, the decisive factor is only the embodiment of the patent for a process II — Summary of the written in the imported machine in question. observations submitted to The possibility of using the patent for a the Court process for machines of a different type does not prevent its being accepted that The plaintiff in the main action observes the patent for a process is embodied in that the Court of Justice had declared the imported machine. that for the purpose of the determi By order of 6 October 1977, the Finanz nation of the value for customs purposes gericht stayed the proceedings and it is in principle necessary to decided to refer to the Court of Justice concentrate only on the intrinsic value under Article 177 of the EEC Treaty of the article and to disregard the value the following question: of processes, which may be patented, in "Are Article 3 (1) (a) of Regulation which it may be used (Paragraph 4 of the Decision of the Court in the above (EEC) No 803/68 of the Council and mentioned case). the judgment of the Court of Justice of the European Communities of 14 July It considers that it is possible to 1977 in Case 1/77 to be interpreted as derogate from that principle only by meaning that the value of a patent for a way of exception, in particular where process is to be included in the normal the protected process is completely price of goods only if the process can be embodied in the imported goods.

JUDGMENT OF 16. 3. 1978 — CASE 135/77

other words, the use of the process must 1. the use of the process must constitute on the one hand constitute the only the only appropriate use of the goods economically viable use of the goods and and on the other, the process must only be put into effect by the use of those 2. the process may only be put into goods. It agrees entirely with the effect by the use of those goods. definition of the concept of "embodiment" given in Paragraph 3 of In the Commission's opinion, the Court the Decision in the above-mentioned repeats these two characteristics in the case. operative part of the judgment by It suggests that the answer to the requiring not only that the use of the question referred by the Finanzgericht process must constitute the only should be as follows: economically viable use of the goods, "Article 3 (1) (a) of Reguladon No but also that the patent for the process 803/68 of the Council must be must be inseparably embodied therein. interpreted as meaning that the normal Therefore, the Commission considers, price of goods includes the value of a contrary to the view which the Finanz patent for a process where the protected gericht Hamburg seems to take, that process is inseparably embodied therein. there is no discrepancy between the Such is the case where the use of the contents of the grounds of the judgment process constitutes the only and the contents of the operative part of economically viable use of the goods the judgment. and where the process may be put into The Commission suggests that the effect only by the use of those goods". The Commission considers that the two question referred to the Court of Justice or a preliminary ruling by the Finanz guiding principles upon which the short gericht Hamburg should be answered as statements contained in the operative follows: part of the judgment are based are revealed in the grounds of the judgment "Article 3 (1) (a) of Regulation No of 14 July 1977. On the one hand, the 803/68 of the Council is to be Court, going beyond the wording of the interpreted as meaning that the value of provision contained in Article 3 (1) (a), a patent for a process concerning the also includes within the scope of that use of imported goods must not be provision the possibility of taking into included in the value for customs account the value of patents for purposes of those goods where the processes relating to the use of goods patented process may also be used with (Paragraph 5 or the Decision). At the other types of goods." same time, the Court of Justice emphasizes that patents for processes may not be included in the value for III — Oral procedure customs purposes of goods except in certain special and well-defined cases The Commission of the European (Paragraph 4 of the Decision). Communities, represented by Manfred The condition upon which the existence Beschel, member of the Legal Service of of a special case depends is the the Commission, presented oral embodiment of the patented process in argument at the hearing on 9 March the goods themselves. To be able to 1978. speak of such embodiment, two conditions must be fulfilled according to The Advocate General delivered his the case-law of the Court of Justice : opinion at the same hearing.

BOSCH v HAUPTZOLLAMT HILDESHEIM

Decision

1 By order of 6 October 1977, which reached the Court on 8 November 1977, the Finanzgericht Hamburg referred to the Court of Justice under Article 177 of the EEC Treaty a question on the interpretation of Regu lation No 803/68 of the Council of 27 June 1968 on the valuation of goods for customs purposes (Official Journal, English Special Edition 1968 (I), p. 170), in particular Article 3 thereof, and of the judgment given by the Court of Justice on 14 July 1977 in Case 1/77 ([1977]) ECR 1473).

2 The question asks whether the value of a patent for a process is to be included in the normal price of goods only if the process can only be put into effen by the use of those goods or whether the value of the patent for the process must also be included in the normal price if, although the only economically viable use of those goods consists in the carrying out of the process, the process can also be used in connexion with other types of goods.

3 The decision in the above-mentioned judgment already provides that:

"By only mentioning patented inventions in accordance with which goods are manufactured, Article 3 seems to exclude patented inventions which relate to the process of use of the article. However, this distinction loses its meaning in cases in which the manufactured article and the process of use thereof are so closely linked that the manufactured article and the process of use are embodied in one and the same article. In fan the result of an interpretation of Article 3 in accordance with the objectives of the basic provision laid down by Article 1 of the regulation is that a patented process, the carrying out of which constitutes the only profitable use of the goods and which is only put into effect by the use of those goods, is regarded as embodied in the imported goods".

4 The operative part of that judgment must therefore be understood in the light of that paragraph of the decision.

It is therefore appropriate to state to that effect the reply to be given.

JUDGMENT OF 16. 3. 1978 — CASE 135/77

Costs

5 The costs incurred by the Commission of the European Communities, which submitted observations to the Court, are not recoverable.

Since the proceedings are, so far as the parties to the main action are concerned, a step in the action pending before the Finanzgericht Hamburg, the decision on costs is a matter for that court.

On those grounds,

THE COURT (First Chamber)

in answer to the question referred to it by the Finanzgericht Hamburg by order of 6 October 1977 hereby rules:

Article 3 (1) (a) of Regulation No 803/68 of the Council is to be interpreted as meaning that the normal price of goods includes the value of a patent for a process where the protected process is inseparably embodied in the goods. This is the case where the carrying out of the process constitutes the only economically viable use of the goods and where the process may only be put into effect by the use of those goods.

Bosco Donner O'Keeffe

Delivered in open court in Luxembourg on 16 March 1978.

A. van Houtte G. Bosco

Registrar President of the First Chamber