C-238/89

OPINION OF MR TESAURO — CASE C-238/89

OPINION OF MR ADVOCATE GENERAL TESAURO delivered on 9 October 1990*

* Original language: Italian. 2 — As a research note prepared in the Court shows, in the 1 -— First Council Directive of 21 December 1988 Benelux countries and the Federal Republic of Germany at (89/104/EEC) to approximate the laws of lhe Member least, the use of the symbol (R) could serve to prevent a Sutes relating to trade marks (OJ 1989 L 40, p. 1). trade mark being used generically.

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the plaintiff in the main proceedings is not mark has not been registered in Germany, claiming any right over the trade mark even if it has been duly registered in the under German law, nor is it alleged that exporting country. there is any possibility of confusion with similar trade marks. The plaintiff in the main proceedings objects to the use of the symbol (R) in the marketing of the product The questions referred by the national court in the Federal Republic of Germany simply to the Court of Justice concern precisely the because, in its view, it could mislead third compatibility of such a prohibition with parties as to the State in which the trade Articles 30 and 36 of the Treaty. mark is registered.

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OPINION OF MR TESAURO —CASE C-238/89

under German law and one that is protected It is clear that, in practice, the restrictive only under the law of another Member effects of such a prohibition will, in the State. The judgment in Case 177/83 Kohl main, apply only to imported products. [1984] ECR 3651 is relied on in support of However, the case-law of the Court on this that argument. point is, in my view, clear. The fact that a national provision operates to the detriment of imports by producing 'protective effects' on the national market does not mean that the measure cannot 'apply without distinction' (see the judgment in Case 16/83 Prantl [1984] ECR 1299, paragraph 21); However, in view of the abovementioned the effects on imports are, in any event, of factors, it would seem to be difficult to deny importance only for the purpose of deter­ that the prohibition at issue is a measure mining whether the rules in question impede which is 'applicable without distinction'. trade and hence fall within the scope of The German court takes the view that under Article 30. the German rules on unfair competition the use of the symbol (R) is lawful only if the relevant trade mark has been registered in the Federal Republic of Germany. That requirement applies, however, regardless of the origin of the product. The use of the symbol (R) is therefore, in principle, auth­ In conclusion, it appears to me that the orized both for national products and for present case concerns a measure which products imported from other Member 'applies without distinction' since what is at States; conversely, neither national products issue is a prohibition, in a sector in which nor imported products may be marketed in there are no Community rules, on the use of the Federal Republic of Germany with the a specific symbol, applied in the same way symbol (R) if their trade marks have been to national goods and to imported goods. registered only in another Member State.

However, it is also indisputable that there is market system, consumer protection and a material limit on the exercise of the fair trading ... must be guaranteed with Member States' power in that regard in the regard on all sides for the fair and tradi­ form of the obligations laid down by tional practices observed in the various Community law, in particular the funda­ Member States' (see the judgment in Case mental principle of the free movement of 179/85 Commission v Germany [1986] ECR goods. In accordance with that principle, 3879, and Prantl, cited above). national measures which restrict trade may be applied to imports of goods lawfully produced and marketed in their State of origin only if they are actually 'necessary' to attain objectives such as consumer 5. With regard to the present case, it should protection or fair trading. be pointed out, first of all, how the order making the reference for a preliminary ruling itself clearly identifies the restrictions on trade resulting from the application of the national prohibition. In so far as it is prohibited, as misleading, to market goods with the symbol (R) if their trade marks are That is particularly true for those national not registered in Germany, traders who provisions, relating to the presentation and possess rights in a trade mark which has marketing of goods (including, in my view, been duly registered in another Member the rules governing a particular symbol), State are forced, in order to export to the which, if also applied to imported products, Federal Republic of Germany, either quite can make the marketing of such products at simply to remove the symbol (R) or to least more difficult or onerous since they register the trade mark in the Federal make it necessary to change the presen­ Republic of Germany as well, or at least to tation of the products in order to make it provide additional information indicating, comply with the various requirements in without any possible ambiguity, in which force in the country of destination. 4 Member State registration took place, for example, by using the words '(R) in Italy' or similar wording.

(ii) in order to comply with the German rules traders would be faced with additional costs (for registration in Germany or for changing the presen­ tation of the goods) such as to disad­ 6. In my view, therefore, the national vantage the imported product; prohibition cannot be regarded as 'necessary' in order to guarantee the imperative requirements recognized by Community law. It is true that that prohibition, in so far as it results from the application of Paragraph 3 of the Gesetz (iii) changing the presentation of goods is gegen den unlauteren Wettbewerb, may, in particularly difficult, if not impossible, abstract terms, be considered to be intended where the symbol (R) not only appears to protect consumers (albeit in the widest on the packaging but is printed on the sense, that is to say encompassing the product itself (as in the present case); protection of legitimate expectations of third parties in general from misleading information or presentation) and, at the same time, fair trading (in so far as the misleading presentation of a product can provide one competitor with an unfair advantage over another). (iv) quite often the product is exported not by the producer but by independent commercial intermediaries who usually do not have the right to take unilat­ erally the steps necessary to comply with the German rules. However, it is also true that, on closer analysis, it does not appear that the free movement of goods such as those at issue is really likely to mislead third parties and thus distort competition. Furthermore, it must be added that if similar prohibitions were also to be imposed in other Member States a serious impediment would be created to the movement within the Community of products duly and tradi­ tionally marketed in their States of origin with the symbol in question. For example, if In that regard, I would make the an Italian court considered it necessary to preliminary observation that it is plain that apply the Italian rules on fair competition in the symbol (R) was placed on the product in

Lastly, it should be pointed out that even if the consumer associates certain qualities with the registration of a trade mark in a That said, it should be pointed out, firstly, particular country — an assumption which, that in the present case there does not however, appears to be entirely hypo­ appear to be any risk of misleading thetical — there is nothing to stop producers consumers in the strict sense, that is to say who can meet that requirement from those who purchase products bearing the supplying that information to the consumer symbol (R). As the Commission pointed out, on their own initiative. It is clear, however, the symbol (R), by virtue of its very that, even in such a hypothetical case, a function, is a message not to consumers but prohibition such as the one at issue appears essentially to other traders and in particular manifestly disproportionate. to the competitors of the undertaking using the symbol. That can be confirmed empirically by the fact that the symbol (R), or similar markings, often takes a less than prominent place in the presentation of the product inasmuch as it does not in any way draw the attention of purchasers. Secondly, there is also no real risk of misleading those to whom notice of a trade mark's registration is normally directed: economic operators. The national court considers that use of the symbol (R) in a way which breaks with the traditional national practice prejudices the legitimate In reality, for the consumer it is not all that expectations of those economic operators. important to know that a particular trade They are always led to believe that a trade mark has been registered; what concerns mark with the symbol (R) has been him, if anything, is to be sure that a trade registered in the Federal Republic of mark (with or without the symbol of regis­ Germany and consequently enjoys a specific tration) has not been forged or does not legal status; when, therefore, products with give rise to confusion with similar trade the symbol (R) whose trade mark has not

However, common experience shows us that a prudent entrepreneur, exercising a normal Indeed, in a single market whose corollary degree of diligence, who wishes to market a is the greatest degree of liberalization of product and who is therefore interested in intra-Community trade, the protection of knowing whether or not a particular trade third parties cannot be fashioned on the mark is registered and consequently enjoys basis of purely national considerations. In the relevant legal protection, will, before he fact it is normal that the opinions and the takes any other step, ascertain the precise representations of third parties — and legal situation of the trade mark in question the relevant protection — should undergo at the appropriate public registers, irres­ progressive change as the market becomes pective of whether or not a similar product increasingly integrated. bears the symbol (R). The legal protection of such operators exercising a normal degree of diligence is not therefore really dependent on — much less prejudiced by — whether or not products bearing the symbol (R) are in free circulation but with a Moreover, that is the perspective adopted in trade mark that has not been registered in its case-law by the Court, which has stated the country in which those products are that: being marketed. Even where there is no national prohibition, those operators do not run the risk of being misled as to whether a particular trade mark is legally protected and, therefore, as to the scope of their own commercial property rights. For the same 'Consumers' conceptions, which vary from reasons, it must be considered that, without one Member State to the other, are also the contested prohibition, there is no risk of likely to evolve in the course of time within distortions of competition. a Member State. The establishment of the common market is, it should be added, one of the factors that may play a major 5 contributory role in that development'.