C-144/81

In Case 144/81

REFERENCE to the Court under Article 177, of the EEC Treaty by the Gerechtshof [Regional Court of Appeal], The Hague, for a preliminary ruling in the proceedings pending before that court between

KELRKOOP BV, whose registered office is in Rotterdam,

appellant, and

NANCY REAN Gifts BV, whose registered office is in The Hague,

respondent,

JUDGMENT

Facts and Issues

The facts of the case, the course of Marketing Systems Inc. The product was the procedure and the observations marketed in the United States by the submitted pursuant to Article 20 of the Ambassador mail-order undertaking. As Protocol on the Statute of the Court of it was regarded as out of fashion in the Justice of the EEC may be summarized United States, the bag no longer figures as follows: in Ambassador's catalogue.

Nancy Kean Gifts BV whose registered office is at The Hague, is an exclusively I — Facts and written procedure commercial undertaking. In order to sell the bag in question in the Netherlands Nana.· Kean Gifts, which bought it from This case is about a design for a ladies' Renoc AG of Zug, Switzerland, filed the handbag. design with the Benelux Designs Office on 23 April 1979. It states that the bag which it markets is manufactured in The design for the bag, created in the Taiwan, from where it is directly United States, was the subject of a dispatched to the Netherlands. registration, "US Patent Design 250.734", dated 28 March 1977, which mentions as "Inventor" a certain Mr At the beginning of 1980 Nancy Kean Siegel and as licensee the company Amba Gifts found that the mail-order company

JUDGMENT OF 14. 9. 1982 — CAUSE 144/81

KEURKOOP » NANCY KEAN GIFTS

The reference for a preliminary ruling What is the precise date on which the was lodged at the Court Registry on 5 design for the bag became protected? June 1981. 2. Keurkop BV In accordance with Article 20 of the Protocol on the Statute of the Court of What does this company mean when Justice of the EEC written observations it maintains that the bag registered by were submitted by Keurkoop, the Nancy Kean Gifts is a copy?

JUDGMENT OF 14. 9. 1982 — CAUSE 144/81

The parties to the main action and the Commission were required to submit In Keurkoop's opinion the national court their observations by 2 March 1982. was wrong not to include in the questions referred to the Court of Justice Keurkoop did so on 25 February 1982, this latter aspect of the problem. Nancy Kean Gifts on 21 January 1982 However, the position of Nancy Kean and the Commission on 2 March 1982. Gifts, confirmed, it seems, by the Gerechtshof, is untenable in law inasmuch as, contrary to its objective and In accordance with Article 54 of the purpose, the protection of designs Rules of Procedure, the President fixed enables a trader or an importer-reseller, as the date for the opening of the oral whose only merit is to have filed the procedure the date of expiry of the design before his competitors, to secure a period allowed for the submission of the monopoly on the Benelux market. written observations in reply to the According to Keurkoop that was not the questions put by the Court. merit which the Uniform Benelux Law intended to protect.

II — Summary of the written h is apparent from the explanatory o b s e r v a t i o n s submitted to statement relating to Article 1 of the the Court Uniform Benelux Law that "this law is intended to encourage industrialists and craftsmen who are desirous of taking First question greater interest in the form of the utility products which they manufacture" Keurkoop would like the Court to (Netherlands Text, Śch. and Jord., broaden the examination of the first Edition 1974, p. 26).

KZURKOOP v NANCY KEAN GIFTS

(a) In the Federal Republic of Germany, the United Kingdom and in According to Keurkoop it follows from Italy the rules governing designs are the foregoing that the Uniform Benelux closely linked with those governing Law is contrary to the commonly patents. accepted concept of the protection of designs inasmuch as it shields the person filing a design, irrespective of his sutus The Geschmacksmustergesetz [Law on (in this case that of a mere trader) and Ornamental Designs] of 1876, the by virtue of the mere formal act of filing Registered Designs Act 1949 and the it, from the complaint that he has copied Iulian Decree of 25 August 1940 grant it, even if he admits this before the court, protection for industrial designs. as occurred in this case. In Keurkoop's view, discrimination between importer- resellers results precisely from the fact In the Federal Republic of Germany a that under the Uniform Benelux Law it is preliminary draft law states that a design impossible for third parties concerned to may not be protected if it is a copy of oppose registration by raising the another creation. In the United Kingdom objection that the design has been utility objects may be protected provided copied. always that the person registering the design is its author or has had it manu- factured on his behalf. In Iuly, proof is By authorizing the misuse of an required that the person filing the design industrial property right the Uniform is its author or a person entitled under Benelux Law sets up a partition between him; proof to the contrary may be the market in the Netherlands or the supplied by any person concerned. Benelux countries and that of the other Member States. Keurkoop stresses that the handbag in question is sold by other (b) In other countries such as France, mail-order undertakings in the production of designs comes under the Netherlands, the Federal Republic of rules for the protection of literary and Germany, France, Belgium and Luxem- artistic property which stress the bourg.

According to Keurkoop the first question the opportunity to hold copying to be a should be examined in the light of the ground for dismissal of the action". foregoing considerations. The absence of harmonization of national laws on designs cannot prevent the Court from judging the consequences of the For that reason, in Keurkoop's view, the application of the Uniform Benelux Law first question should be answered in the in relation to the Community principle of negative. the free movement of goods and to the definition of protection which, in this field, is commonly accepted in the In the Commission 's opinion it seems at domestic laws of the Member States. first sight surprising that in the context of this dispute the Netherlands court decided to put to the Court of Justice questions for a preliminary ruling relating to the interpretation of Articles Keurkoop emphasizes, first, that it is 30 and 36 of the Treaty. The Com­ thanks to the case-law of the Court that mission, which refers to the judgment in the law on trade marks and patents has Cases 51, 86 and 96/75 EMI Records v progressed at the Community level (it refers to R. Ludding's study "Mededin- CBS Scballplatten [1976] ECR 811, at gingsrecht in de EEG" [Competition pages 811, 871 and 913 respectively, Law in the EEC], Eur. Monografieën, considers that in so far as the products at No 27, Kluwer 1979), secondly, that issue were imported directly, both by. where the action undertaken by the Keurkoop and Nancy Kean Gifts, from plaintiff amounts to prohibiting imports countries outside the Common Market, the Court generally examines whether, in intra-Community trade is not concerned. such circumstances, such action is justified (cf. inter alia Case 58/80 Dansk Supermarked v ¡merco [1981] ERC 181) To the Commission it seems that it was and finally that the Court has already Keurkoop's argument which led the ruled on the problem of restrictions in national court to refer the matter to the the matter of proof in cases concerning Court of Justice. According to that industrial property (inter alia in Case argument, intra-Community trade is 102/77 Hoffmann-La Roche v Centrafarm concerned, since this particular model of [1978] ECR 1139 and Case 3/78 bag, which comes from Taiwan, is sold Centrafarm v Ameńcan Home Products elsewhere in the Common Market and is [1978] ECR 1823). thus capable of being imported into the Netherlands from other Member Sutes.

of rights which constitute the specific Legal certainty is ensured by the fact that subject-matter of the industrial and the protection has its origin in the act of commercial property. filing the design and the entry of the right claimed in public registers to which third parties have access. The simplicity The Commission emphasizes that the resides in the procedures prescribed for Court has not yet had occasion to define filing and in the fact that it was decided the content of the specific subject-matter not to lay down or to verify compliance of the right in a design. According to the with, any requirement that the person case-law on other industrial and filing the design should have supplied commercial property rights the specific himself the efforts leading to its creation. subject-matter of a right in a design may be defined as the exclusive right of the proprietor to be the first to market a The Netherlands Government takes the product having a specific industrial form. view that when filing is effected by a person other than the author and when the author himself does not object it is in According to the Commission, in the conformity with the spirit informing the internal legal systems of the Member property system in question that third States, the right in a design is covered, in parties should not be entitled to contest some cases, by the protection of literary the right of the person filing the design. and artistic property and, in others, by industrial and commercial property.

In patent and that the right may be other countries, the protection of the contested only by the author of the right in a design is granted to the person work. This principle is also accepted in who first files it. the Netherlands Law on Patents (Rijksoc- trooiwet, Articles 6 and 51(1) (b)). The Commission considers that in the absence of harmonization of national laws on the subject the Member States The Netherlands Government recalls should be left with the task of ascer- that, according to the consistent case-law taining the proprietor of the right in a of the Court, the rules of the Treaty do design and that, in so far as the author not affect the existence but only, in has the opportunity of asserting his certain circumstances, the exercise of rights, the Uniform Benelux Law is in rights conferred by the legislature of a conformity with the provisions of the Member State in the field of industrial Treaty. and commercial property.

JUDGMENT OF 14. 9. 1982 — CAUSE 144/81

The French Government states that the Council in 1962 under Article 87 of efforts at unification or harmonization of the EEC Treaty, the term "industrial national laws relating to the protection property rights" is described, in Article 4 of industrial and commercial property (2) (2) (b), as covering "in particular were mainly concentrated in the field of patents, utility models, designs or trade patents (Conventions of Strasbourg, marks". Munich and Luxembourg) and of trade marks (the Commission's proposals for a Community trade mark and for the harmonization of national laws). According to the United Kingdom the object of the Uniform Benelux. Law is not the exclusive protection of the author of the design. It is also intended to In the French Government's view, in the protect anyone who, desirous of intro- absence of a Community scheme for ducing a new design, has made a sub- protecting designs or for harmonizing stantial investment (both of money and national laws, recourse should be had to of skill) in launching and popularizing Article 36 of the Treaty which ac- the design and, if he is a manufacturer, knowledges the right of the national in the actual manufacture. It is right that legislatures in this field, subject only to the law should give him a limited the reservation that they do not monopoly so that someone else cannot introduce disguised restrictions into take advantage of his investment by intra-Community trade. If experience marketing a substantially indentical prod- were to show that obstacles to the uct. establishment or functioning of the common market result from the application of certain national laws on the protection of industrial and The United Kingdom considers that, so commercial property, the French long as there are no Community rules in Government considers that the solution a particular area of law, the Court can only be found in the creation of a should not be called upon to look in uniform law or in the approximation of detail at the laws of a given Member national laws. Sute.

impression that Nancy Kean Girts filed carried out by the proprietor of the right the design for the handbag in question in the country of importation or with his not only in the Benelux countries but consent. also in other Member States. However, Nancy Kean Gifts filed the design only with the Benelux Designs Office. If the answer to that point is in the affirmative the Commission observes that according to consistent case-law of the Keurkoop notes that the second Court (cf. inter alia Case 187/80 Merck v question, which adopts the terms of its Stephar [1981] ECR 2063, Case 15/74 last ground of appeal, is no longer of Centrafarm v Sterling Drug [1974] ECR any interest in so tar as Keurkoop's aim 1147, Case 119/79 Terrapin [1976] ECR was to urge the national court, should 1039) the right in the design is Nancy Kean Gifts plead in the exhausted. If the answer to the point is proceedings on appeal that there was a in the negative the proprietor of the right legal relationship with Ambassador or will be entitled to resist the importation Siegel, or both, under which it was auth- of such products (Case 24/67 Parke orized to file the design in the Davis [1968] ECR 55 and Case 15/74 Netherlands, to take into account the Centrafarm v Sterling Drug, cited above) fact that the handbag had perhaps been unless such action in fact constitutes a lawfully marketed in another Member disguised restriction on trade between Sute by Ambassador or Siegel, or both, the Member Sutes. or with its or his consent. As the Gerechtshof has accepted that Nancy Kean Gifts was not entitled to file the The Commission reserves the right to design in its author's name, it follows, in discuss this problem during the oral Keurkoop's view, that'the fourth ground procedure as the material contained in of appeal and, consequently, the second the file does not of itself make such an question put to the Court, is no longer analysis possible. of any importance.

have no means of protecting himself harmonized and inasmuch as the Court against parties infringing his rights. cannot accept any breach of the principles of free movement and free competition, effect should be given, in Such a solution would, in the view of the pursuance of Article 36, to national laws Netherlands Government, have the effect protecting industrial propert)· rights. of destroying the objectives of the national laws on the subject by affecting not only the exercise of the right but, in reality, "the right itself, as from its The United Kingdom states that in Case inception". 24/67 Parke Davis and in Case 119/75 Terrapin, the Court upheld the appli- cation of national industrial property rights where there was no connection The Netherlands Government stresses between the goods produced by the that, according to Article 81 of the proprietor of the industrial property right Convention for a European Patent for and those marketed in another Member the Common Market, signed in Luxem- State without his consent. bourg on 15 December 1975, rights conferred by a national patent become exhausted when the product has been put on the market in one of the Member According to the United Kingdom the States by the proprietor of the patent or second question should be answered in with his express consent. It suggests that the negative in so far as, on the one the second question be answered in the hand, the marketing by Keurkoop affirmative if such consent exists and in concerns products which that company the negative if it does not. obtained in a Member State of the Community other than that in which the proceedings for an injunction were The French Government shares this view brought and, on the other hand, the to some extent but none the less marketing in the latter Member State emphasizes that too strict an application does not infringe any right of Nancy of the solutions arrived at bv the Court, Kean Gifts. It considers that a different inter alia in Case 24/67 Parke Davis and answer would constitute a radical 187/89 Merck v Stephar, might give rise development of Community law and to forms of conduct which would run would all but destroy the value of any directly counter to the objectives of the national industrial property right which Treat)-. In order to preveni their right was not matched by equivalent rights in from being exhausted undertakings all Member States. might either refuse to develop their industrial property rights in the Member States which offer no protection, which would prejudice the principle ot the free movement of goods, or completely and III — Written observations sub- systematically leave the market in those mitted in answer to the States to their competitors, which would questions put by the Court distort competition.

put by the Court have been noted under The third question put to the the heading "Facts and procedure". Commission and to the parties to the main action, relating to the handbag that was the subject of the American registration, was concerned with ascer- In answer to the second question in taining by whom the bag was marketed, which Keurkoop was asked what it where it was manufactured and from means "when it maintains that the bag where it was imported. registered by Nancy Kean Gifts is a copy" Keurkoop replies that an interpret- ation, in conformity with the Treaty, of Keurkoop states that, as far as it knows, the specific subject-matter or the this bag is no longer marketed by or in essential function of the right in the name of Siegel or Amba. industrial designs (inasmuch as they constitute industrial and commercial property within the meaning of Article 36 of the Treaty) implies that the only It recalls that the handbag in question in person who may benefit from protection this case has been manufactured for a is he who, with a view to the shaping (or long time in conformity with Siegel's improvement of the form) of his design, by a number of Taiwanese industrial produci, has invented a design infringers of the right in the design in or has had one invented by a third party Taiwan and marketed in the Member on his behalf. The protection thus Sutes of the Community mentioned in afforded is intended to compensate for its written observations. the efforts, whether material or non- material, or both, expended by the author or by the person entitled under him, in his capacity as a person engaged Without expressly referring to the bag in industry. which was the subject of the registration "US Patent Design 250.734" Nancy Kean Gifts indicates that the handbag is marketed in the Federal Republic of Germany by Otto GmbH which imports When Keurkoop states, therefore, that it directly from Taiwan. In the United the design for a bag filed by Nancy Kean Kingdom the handbag is sold by Nancy Gifts constitutes a copy, it wishes to Kean Gifts Ltd and in Denmark by the convey that Nancy Kean Gifts has Atelier Nancy APS. Nancy Kean Gifts nothing to do with the creation of the states that the two last-mentioned legal design for this bag but that, as is persons belong to the same group as apparent, moreover, from its own state- itself and that they also buy the handbag ments in the main action, it knowingly manufactured in Taiwan from Renoc AG appropriated, without any right or of Zug, Switzerland. consent, the shape for a handbag created by a third party (Siegel). The Commission says it has not the information to allow it to answer the Such a monopolization, especially when third question. claimed by an imponer as against one or more other importers, is incompatible with the essential function of the right in In the fourth question the Commission industrial designs within the Common was asked whether the handbag at issue Market. was protected by the laws on designs in

Keurkoop adds that no design of the Although the fourth question was ad- handbag seems to have been filed in the dressed to the Commission, Keurkoop is United Kingdom or Denmark. desirous of giving the following infor- mation. According to information received from the German Patents Office at Munich, It is apparent from the extract from the no design has been filed from abroad in French Designs Register, which was regard to this bag. annexed to Keurkoop's letter, that Peter Herman filed the design for a handbag In Italy no inquiry seems to be possible on 18 April 1979 under N o 31937. unless the name of the person presumed According to Keurkoop there is prima to have filed the design can be given. facie no doubt that the bag in question is identical to the one which was filed in In Greece there is as yet no registration Benelux in the name of Nancy Kean of designs. Gifts. The following observations are therefore called for on the part of Keurkoop.

2 It appears from the particulars supplied by the national court that the company Nancy Kean Gifts whose registered office is at The Hague filed a design for a ladies' handbag with the Benelux Designs Office on 23 April 1979.

Í The design filed bv Nancy Kean Gifts appears similar to an American design which was filed ón 28 March 1977 as "US Patent Design 250.734" and mentioned as inventor Mr Siegel and as licensee the company Amba Marketing Systems Inc.

4 Nancy Kean Gifts which obtained supplies from the company Renoc AG of Zug, Switzerland, states that the handbag which it markets is made in Taiwan whence it is directly dispatched to the Netherlands.

s At the beginning of 1980 Nancy Kean Gifts found that another undertaking, the company Keurkoop BV, whose registered office is in Rotterdam, was offering a ladies' handbag the appearance of which Nancy Kean Gifts considered to be identical with the design which it was itself selling and, in reliance on its exclusive right to the design, commenced proceedings for an interlocutory injunction against Keurkoop before the President of the Arron- dissementsrechtbank [District Court], Rotterdam.

JUDGMENT OF M. 9. 1982 — CAUSE 144/81

6 According to the particulars supplied by Keurkoop, it obtained the handbag in question from a wholesale exporter, the Formosa Keystone Products Corporation whose registered office is in Taiwan and which in turn obtains its supplies from two manufacturers, also established in Taiwan, namely the Taiwan Plastic Company and Ocean Lights Industries Corporation.

KEURKOOP v NANCY KEAN GIFTS

io The Gerechtshof first of all found that Nancy Kean Gifts was not the author of the design for the bag which it had filed and that it had not filed the design with the consent of the author or of a person entitled under him as regards Benelux territory or as a result of any legal connection with any such person.

n At paragraph 11 of the grounds of its judgment the Gerechtshof defined the scope of the Uniform Benelux Law on Designs. The Gerechtshof pointed out that in the Benelux countries creative work was protected by copyright but the subject-matter of the protection provided by the Uniform Law was according to Article 1 thereof only "the new appearance of a product serving a utility purpose". By virtue of Anicie 4, products known in the past but forgotten for 50 years in the Benelux countries may be new within the meaning of the law. Furthermore the Uniform Law does not require that the novelty be the result of a creative act, that is to say, essentially artistic. Contrary to what Keurkoop maintains, Article 3(1) which provides that "the exclusive right to a design shall be acquired by the person who is first to file it" is in no way based on the presumption that the person filing the design is the author of it. The Uniform Law seeks to protect the industrial manu- facturer or craftsman who wishes his product, whether it be artistic or commonplace, to be distinguished from others, and it does not matter whether the person filing the design is an industrial manufacturer or craftsman. The aim of the law is to prevent the infringement during a specific period of designs chosen by industrial manufacturers and craftsmen and the test of infringement is whether the public may easily mistake one design for another.

i3 The first question is essentially concerned with the question whether the provisions of Article 36 of the Treaty allow the application of a national law which, like the Uniform Benelux Law on Designs, gives an exclusive right to the first person to file a design, without persons other than the author or those claiming under him being entitled, in order to challenge such exclusive right or defend an action for an injunction brought by the holder of the right, to contend that the person filing the design is not the author of it, the person who commissioned the design from him or his employee.

M By way of a preliminary observation it should be stated that, as the Court has already held as regards patent rights, trade marks and copyright, the protection of designs comes under the protection of industrial and commercial property within the meaning of Article 36 inasmuch as its aim is to define exclusive rights which are characteristic of that property.

is According to Article 1 of the Uniform Benelux Law protection is afforded by that law only to the novel feature of a product serving a utility purpose, that is to say, according to Article 4, a product which in fact has not been commonly known in the industrial or commercial circles concerned in the Benelux territory during the 50 years prior to the filing of the design. According to Article 3 the exclusive right to a design is acquired by the first person to file it without it being necessary to inquire whether that person is

KEURKOOP v NANCY KEAN GIFTS

also the author of the design or a person entitled under him. The reason for the rule is to be found in the function of the right to the design in economic life and in a concern for simplicity and efficacy. Finally, by virtue of the detailed rules laid down in Article 5 of the law the author of the design may, during a period of five years, claim the right to its registration and may at any time claim to have the registration annulled.

JUDGMENT OF 14. 9. 1982 — CAUSE 144/81

20 The answer to the first question must therefore be that national legislation having the characteristics of the Uniform Benelux Law on Designs falls within the scope of the provisions of Article 36 of the Treaty on the protection of industrial and commercial property. In the present sute of its development Community law does not prevent the adoption of national provisions of the kind contained in the Uniform Benelux Law, as described by the national court.

Second question

21 The second question is essentially concerned with the question whether, in view of the provisions of the Treaty the owner of an exclusive right to a design protected by the legislation of a Member State may rely on that legislation in order to oppose the importation of products, whose appearance is identical to the design which has been filed, from one of the Member States of the Community where their marketing does not infringe any right of the owner to the exclusive right in the country of importation.

2: First of all it must be observed that in principle the protection of industrial and commercial property established by Article 36 would be rendered meaningless if a person other than the owner of the right to the design in a Member State could be allowed to market in that State a product which is identical in appearance to the protected design. That observation loses none of its force in the particular case, cited by the national court, where a person who wishes to market a product in a Member State has obtained supplies for thai purpose in another Member Sute where the marketing of the product does noi infringe the rights of lhe person who filed the design and who is the owner of the exclusive right thereto in the first State.

26 Furthermore, the proprietor of an exclusive right may not rely on his right if the prohibition on importation or marketing of which he wishes to avail himself could be connected with an agreement or practice in restraint of competition within the Community contrary to the provisions of the Treaty, in particular to those of Article 85.

27 Although a right to a design, as a legal entity, does not as such fall within the class of agreements or concerted practices envisaged by Article 85 (1), the exercise of that right may be subject to the prohibitions contained in the Treatv when it is the purpose, the means or the result of an agreement, decision or concerted practice.

2f It is therefore for the national court io ascertain in each case whether the exercise of the exclusive right in question leads to one of the situations which fall under the prohibitions contained in Anicie 85 and which may, in the context of the exercise of exclusive rights to designs take very different forms, such as, for example, the situation where persons simultaneously or successivelv file the same design in various Member States in order to divide up the markets within the Community among themselves.

JUDGMENT OF M. 9. 1982 — CAUSE 144/81

29 It follows from the foregoing that the answer to be given to the second question is that the proprietor of a right to a design acquired under the legislation of a Member State may oppose the importation of products from another Member State which are identical in appearance to the design which has been filed, provided that the products in question have not been put into circulation in the other Member State by, or with the consent of, the proprietor of the right or a person legally or economically dependent on him, that as between the natural or legal persons in question there is no kind of agreement or concerted practice in restraint of competition and finally that the respective rights of the proprietors of the right to the design in the various Member States were created independently of one another.

KEURKOOP v NANCY KEAN GIFTS

2. The proprietor of a right to a design acquired under the legislation of a Member State may prevent the importation of products from another Member State which are identical in appearance to the design which has been filed, provided that the products in question have not been put into circulation in the other Member States by, or with the consent of, the proprietor of a right or a person legally or economically dependent on him, that as between the natural or legal persons in question there is no kind of agreement or concerted practice in restraint of competition and finally that the respective rights of the proprietors of the right to the design in the various Member States were created independently of one another.

Menens de Wilmars Bosco Touffait Due Pescatore Mackenzie Stuart O'Keeffe Koopmans Everling Chloros Grévisse

Delivered in open court in Luxembourg on 14 September 1982.

P. Heim J. Mertens de Wilmars Registrar President

O P I N I O N OF MR ADVOCAT GENERAL REISCHL DELIVERED O N 8 JUNE 1982 '