C-76/90

My Lords, Office are situated. He maintains that under German law Dennemeyer cannot provide the aforesaid service in respect of German patents since it does not hold a special licence under Article 1, section 1, of the Rechtsberatungsgesetz (Law on Legal Advice, hereafter 'the RBG'). 1. In this case, which comes to the Court by way of a request for a preliminary ruling from the Oberlandesgericht München, the essential question raised is whether, notwithstanding certain provisions of German law, Article 59 of the EEC Treaty entitles an undertaking established in another Member State to provide a certain service for undertakings established in 3. There is some confusion about the Germany. The service in question consists of relevant German legislation and about its monitoring patents, advising the proprietors scope. Article 1, section 1, paragraph (1), of of the patents when renewal fees are due the RBG provides in substance that no-one and paying such fees on behalf of the may attend to legal affairs on behalf of proprietors. others, by way of business, whether for remuneration or not, unless he obtains a licence from the competent authority; it is not disputed that the service in question, when performed in Germany, falls within the scope of those provisions. However, although licences may be issued for a 2. The defendant in the main proceedings, number of specific fields, none of those Dennemeyer & Co. Ltd, is an English includes advising on intellectual property company founded in 1973 by two patent rights. experts. One is a British Chartered Patent Agent and both are described in the defendant's observations as European patent agents. The company provides what may be described as a patent renewal service. It stores information about its clients' patents in a computer, informs them when renewal fees are due and, if so advised by the clients, 4. Article 1, section 1, paragraph (2), of the pays the fees on their behalf. It provides RBG provides that a licence may be issued such a service in many countries of the only if the applicant possesses the necessary world, including Germany. Mr Säger, the reliability, personal aptitude and expertise plaintiff in the main proceedings, is a patent and if the demand is not already satisfied by agent in Munich, where both the German an adequate number of existing prac- Patent Office and the European Patent titioners. Article 1, section 3, of the RBG

provides that certain matters are not same view was expressed by the German affected by the Law. Those matters include Government when the Commission the professional activités of notaries, lawyers approached it in response to a complaint (Rechtsanwälte) and patent agents. lodged by Dennemeyer. The German Government adheres to that view in the observations that it has submitted to the Court. However the Oberlandesgericht München, to which M r Säger appealed, considers that the RBG applies because part of Dennemeyer's service — the payment of 5. The combined effect of those provisions, renewal fees — is performed in Germany. as interpreted by the national court, seems Hence Mr Säger will have his injunction to be that in order to provide in Germany a unless Dennemeyer can establish a defence patent renewal service of the type provided on the basis of Community law. The Ober- by Dennemeyer it is necessary to be a landesgericht München has referred the lawyer, a patent agent or the holder of a following question to the Court: licence issued under Article 1 of the RBG. However, the last possibility must be regarded as purely hypothetical, since a licence could not in fact be issued for the activity in question. That is made clear by Article 186 of the Patentanwaltsordnung (Law on Patent Agents), which provides 'Under Article 59 of the EEC Treaty, may a that a licence granted under Article 1, company incorporated under Engish law section 1, of the RBG does not entitle the whose head office is in Great Britain be holder to attend to legal affairs on behalf of required to obtain a licence pursuant to the others in the field of intellectual property. German Rechtsberatungsgesetz if, from its Moreover, it appears that the service in head office, in order to maintain or renew question can only be provided by a lawyer on behalf of third parties German industrial or patent agent acting in his personal property rights whose holders are estab- capacity; it cannot be provided by an incor- lished in the Federal Republic of Germany, porated company, even one that is owned it monitors the due dates of renewal fees, and managed by patent agents (see informs the third parties of those due dates paragraph 18, infra). and pays the fees on behalf of those third parties in the Federal Republic of Germany, when it is not disputed that such activities may be carried on without a licence under the law of a significant number of Member States?'

terms of the German legislation which I services across national frontiers, irres- have already referred to (and this pective of whether there is discrimination impression was confirmed by the German between foreign and domestic undertakings. Government at the hearing) that the Such restrictions are permitted only if they licensing requirement is an illusion in the are justified by the general interest. In the present case because there is no possibility present case there is no such justification of a licence being granted to anyone under because (a) Dennemeyer's clients are not the RBG for the type of activity pursued by ordinary consumers but large undertakings Dennemeyer. The Court cannot therefore, which employ patent experts and (b) in my opinion, confine itself to answering Dennemeyer is itself managed by qualified the question as formulated by the national patent agents. It adds that the European court, but must instead examine the wider Patent Office has declared that a patent- question whether an undertaking which is holder may entrust the payment of fees to established in a Member State and provides any person he chooses. the type of service provided by Dennemeyer can be prevented from providing that service to clients established in another Member State on the basis of legislation of the second State which restricts such activities to members of a particular profession, such as patent agents or lawyers acting in their personal capacities. 11. The German Government considers that the RBG is not in fact applicable to the ac- tivities of Dennemeyer, since they are performed outside German territory. If, however, the RBG is applicable, the German Government considers that there is no 8. Written observations were submitted by objective justification for subjecting the parties to the main proceedings, by the Dennemeyer to a licensing requirement. The German and United Kingdom Governments aims of the RBG are to protect the recipient and by the Commission. In addition, all the of legal advice in Germany and to promote above were represented at the oral hearing the efficient administration of justice in except M r Säger. Germany. Those aims cannot justify regu- lating activities performed outside German territory.

16. Although the arguments developed by the United Kingdom and the Commission 2) Article 1, section 3, paragraph (2), of the about the discriminatory nature of the RBG relieves German patent agents and German legislation appeared perfectly lawyers of the obligation to obtain tenable at an earlier stage of the licences but does not grant similar relief proceedings, it is doubtful, particularly in to patent agents or lawyers qualified in the light of the information provided by the other Member States. German Government at the hearing, whether the supposed discrimination exists.

18. But the essential point is that Dennemeyer is receiving exactly the same treatment that it would receive if it were a company established in Germany. That much is clear from the Masterpatt decision 20. Generally, where the Treaty prohibits cited at the hearing (judgment of the discrimination, it is well established that the Bundesgerichtshof of 12 March 1987, prohibition extends to coven discrimination: reported in GRUR 1987, p. 710). In that see for example, in relation to the free case, in which the plaintiff was again Mr movement of workers, Case 152/73 Sotgiuv Säger, the Bundesgerichtshof held that a Deutsche Bundespost [1974] ECR 153, German company which provided the same paragraph 11. It is also well established that type of service as Dennemeyer should be Article 59 prohibits both forms of discrimi- prohibited from doing so, pursuant to nation: Joined Cases 62 and 63/81 Seco v Article 1, section 1, paragraph (1), of the Établissement d'assurance contre la vieillesse RBG. It was not suggested in that case that et l'invalidité [1982] ECR 223, paragraph 8. the Masterpatt company was owned and But the question which arises in the present managed by qualified patent agents but even case is whether Article 59 merely prohibits if that had been the case it does not seem those forms of discrimination or whether it that that circumstance would have led to a goes further than that and requires the different result. The point is that the abolition of all restrictions, including German legislation does not, it seems, non-discriminatory ones, unless they are permit the service in question to be provided justified by the general interest. It is not in Germany by a limited company at all; the clear from the existing case-law whether service can only be provided by a patent Article 59 extends to measures which d o not agent or a lawyer in their personal ca- involve either overt or covert discrimination. pacities.

Dutch licensing requirement to a British 23. The United Kingdom sought to support undertaking which already held a British the view that Article 59 applies only to licence, although applied to all undertakings discriminatory measures by invoking the providing the service in question in the case-law on freedom of establishment under Netherlands, would have been discrimi- Article 52, which, in its view, makes it clear natory if no account had been taken of the that only discrimination is prohibited.

22. Nor, on the other hand, can the in one Member State and who provides case-law be taken to establish that Article 59 services in other Member States should be applies only to measures involving some required to comply with all the detailed form of discrimination, whether overt or regulations in force in each of those States. covert. It is true that there are isolated To accept such a proposition would be to statements, notably in Case 15/78 Koestler render the notion of a single market unat- [1978] ECR 1971, which appear to support tainable in the field of services. that view, but that is not the effect of the case-law considered as a whole.

the position. It is true that many of the cases services should rather be treated by analogy emphasize the element of discrimination, with goods, and that non-discriminatory but that is no doubt because many restrictions on the provision of services restrictions, which have been imposed should be approached in the same way as autonomously by the Member States and non-discriminatory restrictions on the free which reflect their diverging approaches and movement of goods under the 'Cassis de traditions, are inherently likely to affect the Dijon' line of case-law. That analogy seems foreign provider of services more severely particularly appropriate, where, as in the than one established in the Member State present case, the nature of the service is where the service is provided, and so will such as not to involve the provider of the necessarily be discriminatory in their effect. service in moving physically between

Member States but where instead it is trans- even be considered to fall under Article 30, mitted by post or telecommunications (see rather than under Article 59. Introduction to the Law of the European Communities, by P. J. G. Kapteyn and P. VerLoren van Themaat, 2nd edition, edited by L. W. Gormley, 1989, 27. It is clear that there may be cases, as the pp. 443-452). Court recognized in Case 33/74 Van Bins- bergen [1974] ECR 1299, paragraph 13, where a Member State is entitled to apply its domestic provisions to those established in a second Member State who are

If such a non-discrimination in that context; the third view were accepted, it would mean that paragraph of Article 60 provides that: restrictions on the freedom to provide services would have to be tolerated, even if they lacked any objective justification, on condition that they did not lead to discrimi- nation against foreign undertakings. There might be a variety of restrictions in different 'Without prejudice to the provisions of the Member States, none of them intrinsically Chapter relating to the right of estab- justified, which collectively might wholly lishment, the person providing a service frustrate the aims of Article 59 and render may, in order to do so, temporarily pursue impossible the attainment of a single market his activity in the State where the service is in services. The principle should, I think, be provided, under the same conditions as are that if an undertaking complies with the imposed by that State on its own nationals.' legislation of the Member State in which it is established it may provide services to clients in another Member State, even though the provision of such services would not normally be lawful under the laws of

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provided by means of post or telecommuni- that professional rules of conduct are cations without the provider of the service complied with and that the interests which moving physically between Member States. such rules are designed to safeguard are protected.'

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SÄGER

32. The first is certainly in itself a legitimate grave. That is so because a patent does not aim. The public must be protected against automatically expire if the renewal fees are unqualified laymen who masquerade as not paid on time. Two months after the due lawyers, just as they must be protected date the German Patent Office informs the against charlatans who pass themselves off patent-holder that his patent will lapse if the as doctors. The second aim is really a fees are not paid within a further four variant on the first since it presupposes that months. Although a higher fee is then there is a public interest in protecting clients charged, the amount of the supplement against those who are not qualified to (10% of the normal fee) remains within the provide the service in question. limits of an ordinary commercial risk and so does not justify reserving the provision of patent renewal services to the holders of a particular professional qualification.

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37. Accordingly, I am of the opinion that the question referred to the Court by the Oberlandesgericht München should be answered as follows:

Article 59 of the E E C Treaty must be interpreted as meaning that an undertaking established in a Member State which provides to persons established in another Member State a patent renewal service, whereby it monitors their patents, informs them when renewal fees are due and pays the fees on their behalf, cannot be prevented from providing such a service on the ground that under the law of the second Member State such activities are reserved to patent agents and lawyers. Nor can such an undertaking be prevented from providing such services on the ground that it does not hold a special licence provided for by the law of the second Member State.

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