C-6/81

JUDGMENT OF THE COURT 2 M A R C H 1982 '

BV Industrie Diensten Groep v J. A. Beele Handelmaatschappij BV (reference for a preliminary ruling from the Gerechtshof, The Hague)

(Free movement of goods — Precise imitation)

Case 6/81

Free movement of goods — Quantitative restrictions — Measures having equivalent effect — Restraining precise imitation — Imported product almost identical to another product already marketed in the same Member State — Judgment restraining sale — Permissibility (EEC Treaty, Art. 30)

The rules of the EEC Treaty on the free restraining him from continuing to movement of goods do not prevent a market in that Member State a product rule of national law which applies to coming from another Member State in domestic and imponed products alike, which it is lawfully marketed but which from allowing a trader, who for some for no compelling reason is almost considerable time in the Member State identical to the first-mentioned product concerned has marketed a product which and thereby needlessly causes confusion differs from similar products, to obtain between the two products. an injunction against another trader

J. A. BEELE HANDELMAATSCHAPPIJ BV, Hoorn,

on the interpretation of Anieles 30 to 36 of the EEC Treaty,

T H E COURT

composed of: J. Menens de Wilmars, President, G. Bosco, A. Touffait and O. Due (Presidents of Chambers), P. Pescatore, Lord Mackenzie Stuan, A. O'Keeffe, T. Koopmans, U. Everling, A. Chloros and F. Grévisse, Judges,

Advocate General: P. VerLoren van Themaat Registrar: P. Heim

gives the follo^ ; ng

appellant in the main action [herein- IDG appealed against his judgment to after referred to as "IDG"]. the Gerechtshof, The Hague. Relying on an expert's repon (whose conclusions are contradicted by another expert instructed by Beele), IDG contended in particular that in order to obtain a product The MCT cable ducts are based on a which is technically and commercially technique which was patented in the equivalent to the MCT system it was Federal Republic of Germany, the necessary for the same dimensions as Netherlands and elsewhere. The patents those used in the M C T system to be expired in 1975 and System- und Ver- used for the frame and accessories. IDG fahrenstechnik then began to manu- further argued that Beele's application facture the SVT cable ducts using the was contrary to Articles 30 to 36 of the same technique. EEC Treaty on the ground that the SVT products are manufactured in the Federal Republic of Germany and lawfully- marketed in that country. In both systems the frame is waterproof, fireproof and gas-tight. It consists of a rectangular frame which may be set into concrete walls, built into walls or welded The Gerechtshof, The Hague, shared the to metal walls. The frame has a tapped provisional view of the President of the case through which several cables of Arrondissementsrechtbank but it reserved different thicknesses clasped and secured its judgment in order to submit the by means of rubber cable blocks and following question to the Court: O-blocks may be passed. In addition both systems have various accessories such as filling blocks, anchorage and press plates and a safety seal. "Assuming that:

1. Setting forth the facts of the case in do the rules contained in the EEC its written observations IDG points out Treaty on the free movement of goods, that until the patents expired the M C T notwithstanding the provisions of Article product held an exclusive position on the 36 thereof, then prevent trader B from world market in cable ducts. Thanks obtaining such an injunction against to patents the makers of the M C T trader A?" system had perfected the product in its basic dimensions to afford optimum application. They also brought about internationally standardized dimensions which, although not officially prescribed, 4. The order for reference was compelled a maker of cable ducts who registered at the Court on 14 January wished to compete with the M C T 1981. product on the world market to use the same dimensions. That is precisely what the maker of the SVT cable ducts did and did it so successfully that M C T In accordance with Article 20 of the and SVT are now the only systems Protocol on the Statute of the Court of of perfected cable ducts in the world Justice written observations were lodged with safety seals whilst construction bv IDG, represented by C.E.M. van specifications, on the basis of which Ńispen tot Sevenaer, of the Bar of The contractors and sub-contractors are Hague; the Government of the United invited to tender, always mention the Kingdom, represented by G. Dagtoglou, usual "dimensions or simply refer to the of the Treasury Solicitor's Department, M C T and SVT products. Furthermore, acting as Agent; and by the Commission, where specifications mention a trade represented by its Principal Legal name, it is customary that the conditions Adviser, B. Van der Esch, assisted by Th. which they lay down may be met by

using another brand of product provided which is therefore in principle contrary that it is equivalent. So it would be to Article 30 of the EEC Treaty. economically rash and pointless to sell the SVT product with different dimensions. The injunction cannot be regarded as a reasonable measure which must be accepted by virtue of a mandatory According to IDG the consequences of requirement relating to fairness in the injunction obtained by Beele are commercial transactions which is of such these: concern to the general interest that it must take priority over the rules on the free movement of goods (judgment of SVT will have to set up a separate 20 February 1979 in Case 120/78, the production line to produce a product of Cassis de Dijon case, [1979] ECR 649). a different size just to supply the Netherlands market; Although in the absence of Community rules Article 30 does not have the effect If SVT products installed in ships built or the aim of preventing the application elsewhere are repaired or added to in to a product imported from a Member the Netherlands, Dutch yards will be State of the rules against unfair compelled to use M C T products for competition in force in the importing those purposes; Member State, this is true only in so far as the importation itself is not regarded as an act of unlawful competition Where it is necessary to add to systems (judgment of 22 January 1981 in Case incorporating MCT components it will 58/80 Dansk Supermarked [1981] ECR not even be possible to make competing 181). In the present case it is the product offers quoting SVT components; itself which is challenged. IDG maintains that it is only the importer and does not imitate anything. It is thus the import- If undertakings operating internationally ation itself which the Netherlands courts require the SVT system as standard it consider to be an act of unfair will be possible to meet that requirement competition. in the Netherlands only by supplying MCT products. The injunction cannot be justified on the basis of the exceptions contained in Viewed in that way the judgment of the Article 36 either. The issue cannot be a Netherlands court has the effect of matter of public policy nor is the concept sealing off the Netherlands market for of the protection of industrial and the cable ducts in question within the commercial property relevant since the EEC. On that basis IDG arrives at the patents have expired; what is more, that following conclusions: concept must be construed restrictively in the sense that it does not cover rules on unfair competition. The injunction granted against IDG, which has the effect of sealing off the market, must be regarded as a national IDG therefore proposes that the question measure which directly and actually submitted by the Gerechtshof, The impedes intra-Community trade and Hague, should be answered as follows:

and 3. The written observations of the Commission contain a comparative law study which shows that the laws of all the Member States discussed in that If the manufacture and marketing of the study offer protection against precise products concerned are also subject to imitation. Such protection against rules on unfair competition in those products coming from other Member Member States or that Member State." States is in principle contrary to Article 30 and can only be justified under Article 36 as a rule against unlawful competition. The Commission would accept that in that respect such 2. The United Kingdom submits that protection is permissible provided that it the question submitted by the is kept to what is strictly necessary to Gerechtshof, The Hague, should be attain the specific objective of protection answered in the negative. It points out against precise imitation which is to that it is widely accepted that for one avoid needless confusion as to a trader to package, advertise or display product's origin. goods in such a way that potential pur- chasers may be unnecessarily confused into believing that the goods are those of another trader is contrary to fair The Commission accordingly suggests commercial practice. As the laws in the following reply: question apply to domestic and imported products alike the application of the Netherlands legislation does not amount "The rules on the free movement of to a measure having an effect equivalent goods contained in the EEC Treaty do to quantitative restrictions on imports not prevent a trader from obtaining an and according to the grounds of the injunction restraining the sale in a judgment in Case 38/80 it is not Member State of an imported product on

Decision

1 By judgment of 11 D e c e m b e r 1980 which was received at the C o u r t on 14 J a n u a r y 1981 the Gerechtshof [Regional C o u r t of Appeal], T h e H a g u e , referred to the C o u r t for a preliminary ruling under Anicie 177 of the E E C T r e a t y a question as to the interpretation of the rules of the Treaty on the free movement of goods.

2 T h e question was raised in the context of an action between a N e t h e r l a n d s undertaking, the sole importer of cable ducts manufactured in Sweden which have been marketed in the N e t h e r l a n d s since 1963, and another N e t h e r l a n d s undertaking which since 1978 has marketed in the Netherlands cable ducts

JUDGMENT O F 2. 3. I9S2 — CASE fc/SI

manufactured in the Federal Republic of Germany. The case-file shows that the Swedish cable ducts were previously protected by patent rights in the Federal Republic of Germany, the Netherlands and elsewhere, and that the German cable ducts were first made and imponed into the Netherlands after the period of validity of those patents had expired.

3 The first-mentioned undertaking applied to the President of the Arron- dissementsrechtbank [District Court], The Hague, for interlocutor)· relief against the second undertaking on the ground that the German cable ducts were a precise imitation of the Swedish cable ducts and sought an order from him restraining the defendant from marketing the German cable ducts or causing them to be marketed in the Netherlands.

(c) Netherlands law gives trader B the right to obtain an injunction on that ground restraining trader A from continuing to market the products in the Netherlands;

(d) The products of trader B are manufactured in Sweden and those of trader A in the Federal Republic of Germany;

(e) Trader A imports his products from the Federal Republic of Germanv in which those products are lawfully put on the market by someone other than trader B, the Swedish manufacturer, someone who is associated with one of them or by someone who is authorized to do so by one of them,

do the rules contained in the EEC Treaty on the free movement of goods, notwithstanding the provisions of Anicie 36 thereof, then prevent trader B from obtaining such an injunction against trader A?"

5 The case-file shows that, just like protection against precise imitation in the law of most other Member States, the rule of Netherlands law to which the question refers has been developed chiefly by the couns. As the Commission has pointed out, no effon has been made hitheno at Community level to harmonize national rules against precise imitation. Therefore an examination of the question whether such protection accords with the rules of the Treaty on the free movement of goods should be confined to the way in which that

JUDGMENT OF 2. 3. 1982 — CASE b/S 1

INDUSTRIE DIENSTEN GROEP v BEELE

9 National case-law prohibiting the precise imitation of someone else's product which is likely to cause confusion may indeed protect consumers and promote fair trading; these are general interests which, according to the decisions of the Court cited above, may justify the existence of obstacles to movement within the Community resulting from disparities between national laws relating to the marketing of products. That such a rule does meet mandatory requirements is moreover borne out by the fact that it accords with the principle underlying Anicie 10 bis of the Paris Convention for the Protection of Industrial Property, as last revised on 14 July 1967 at Stockholm, which prohibits inter alia all acts of such a nature as to create confusion with the goods of a competitor, and by the fact that this rule is recognized in principle in the case-law of most Member States.

ic In order to answer the question whether case-law such as that described in the judgment of the Gerechtshof is necessary to achieve the aforesaid objectives, or whether it goes beyond the limit which they may justify, the manner in which that case-law is applied, as described in the judgment, should be scrutinized.

ii As to that, the very wording of the question submitted shows first that in the provisional view of the national court the products which it intends to prohibit from being marketed are for no compelling reason practically identical to the products imitated and that the appellant in the main action thereby needlessly causes confusion. Furthermore, the judgment of the national court shows that the question whether or not such imitation is necessary was considered not only from the technical point of view, but also from the economic and commercial point of view.

Costs

it, The costs incurred by the United Kingdom and by the Commission of the European Communities, which have submitted observations to the Court, are

INDUSTRIE DIENSTEN GROEP v BEELE

not recoverable. As these proceedings are, in so far as the parties to the main action are concerned, in the nature of a step in the action pending before the national court, the decision on costs is a matter for that court.

On those grounds,

T H E COURT,