C-131/01

COMMISSION v ITALY

OPINION OF ADVOCATE GENERAL LÉGER delivered on 12 September 2002 1

1. In the present action, the Commission of vide services within the Community shall the European Communities seeks a declar- be prohibited in respect of nationals of ation that the Italian Republic has failed to Member States who are established in a comply with its obligations under State of the Community other than that of Articles 49 EC to 55 EC. It claims in the person for whom the services are substance that that Member State has intended.' retained rules requiring patent agents estab- lished in other Member States to be regis- tered on the Italian list of patent agents and to have a residence or place of business in Italy in order to provide services before the Italian Patent Office. 3. According to Article 50 EC, '[s]ervices shall be considered to be "services" where they are normally provided for remuner- ation, in so far as they are not governed by the provisions relating to freedom of movement for goods, capital and persons.

I — Legal background

"Services" shall in particular include:

A — Community legal background

(d) activities of the professions. Authority to act for others may be con- ferred only on agents whose names appear on the register kept for that purpose by the Office.

Without prejudice to the provisions of the Chapter relating to the right of establish- ment, the person providing a service may, Authority may in addition be conferred on in order to do so, temporarily pursue his a lawyer or attorney enrolled with their activity in the State where the service is respective professional bodies.' provided, under the same conditions as are imposed by that State on its own nationals.'

5. Article 2 of Decree No 342 of the Italian Republic of 30 May 1995, entitled 'Regu- lation of the profession of industrial prop- erty agents and the keeping of the appropri- ate register', makes enrolment on that B — National legal background register subject to the following conditions:

4. Article 38 of Decree No 338 of the President of the Republic of 22 June 1979, 'There may be enrolled on the register of entitled 'Revision of the national legislation recognised industrial property agents natu- relating to patents under Delegating Law ral persons who: No 260 of 26 May 1978', which amends Article 94 of Royal Decree No 1127 of 29 June 1939, provides:

'Article 94 is replaced by the following article: No one is required to be represented by an authorised agent in proceedings (c) have their residence or a place of before the Central Patent Office; natural business in Italy, unless they are and legal persons may act therein through nationals of a State which permits one of their employees, even though not enrolment of Italian nationals on its authorised. register without such a condition; I - 1662

9. The Italian Republic disputes the com- 6. In its letter of formal notice of 29 July plaints made against it. It submits that the 1998, the Commission criticised the Italian requirements specified in Article 94 of authorities for having retained Article 94 of Royal Decree No 1127 of 29 June 1939, Royal Decree No 1127 of 29 June 1939, as as amended, and Article 2 of Decree No 342 amended, and Article 2 of Decree No 342 of 30 May 1995 are justified by overriding of 30 May 1995. The Commission main- reasons in the public interest and are tains that those articles are incompatible proportionate. In particular, they guarantee with the fundamental principle of freedom to a user of the services, who does not wish to provide services laid down by Article 49 to act in person in his relations with the EC. It claims that it is excessive to require administration, the good standing and patent agents established in other Member competence of patent agents established in States, in which they are lawfully practising other Member States. their profession, to be enrolled on the Italian register of patent agents once they have passed an aptitude test and to have a residence or a place of business in Italy, particularly where their practice before the Italian Patent Office is only sporadic and occasional. 10. As it considered the reply of the Italian authorities to be unsatisfactory, on 2 — Decree-law of the Italian Republic implementing Council 4 August 1999 the Commission sent them Directive 89/48/EEC of 21 December 1988 (OJ 1989 L 19, p. 16) on a general system for the recognition of higher- an additional letter of formal notice. In that education diplomas awarded on completion of professional education and training of at least three years' duration. letter, the Commission repeated its pre-

— declare that, by retaining rules requi- ring patent agents established in other Member States to be registered on the Italian list of patent agents and to have a residence or place of business in Italy 13. On 14 November 2000, the Italian in order to provide services before the authorities restated their position set out in Italian Patent Office, the Italian previous correspondence. Republic has failed to fulfil its obli- gations under Articles 49 EC to 55 EC on the freedom to provide services;

14. Taking the view that this reply did not allow it to find that the Italian Republic — order the Italian Republic to pay the had complied with the obligations under costs. I - 1664

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17. The Italian Republic contends that the interest is not protected by rules to which Court should dismiss the Commission's the service provider is subject in the application and order the latter to pay the Member State where he is established. costs.

III — The first complaint relating to the 20. According to the Commission, it is also incompatibility of Article 94 of Royal part of the Court's settled case-law that Decree No 1127 of 29 June 1939, as these requirements must be objectively amended, with the provisions of Article 49 necessary in order to guarantee compliance EC with professional rules and to ensure the protection of the interests which is the purpose thereof.

A — Arguments of the parties

23. The Italian Government submits that temporary and occasional, the restriction the activity of patent agent is not subject to on the principle of freedom to provide the provisions of Article 50 EC. The deter- services is justified in the present case. It mining factor for treating an activity as submits that the protection of the public temporary and occasional is not only the interest is involved, in particular the avoid- regularity and periodic nature of its provi- ance of a situation where the interests of sion but also its duration and continuity. In the owner of the invention may be jeop- the present case, the activity of filing and ardised. The purpose of this restriction is to registering a single invention is not an make good the difficulties encountered by occasional service but one which lasts for the Italian Patent Office in keeping a check several months. The protection of the on the occasional nature of the activity patent and the representation of the client carried out by a patent agent from another which follows from it will take a number of Member State. Having regard in particular years. Accordingly, that activity cannot be to the number of applications and docu- termed temporary or occasional. It follows ments filed with the national office, such a that Article 50 EC does not apply. check is in fact impossible. Without such a measure being in place, the owner of the invention would run the risk of seeing his application for registration struck out. There is a need to be satisfied as to the professional qualifications and integrity of patent agents established in other Member States. The public interest in protecting users of the services in question against the 24. According to the Italian Government it harm arising from the absence of profes- would be unrealistic to think that an sional or ethical competence on the part of applicant would engage a patent agent for patent agents fully justifies the restriction a single act, such as the filing of a patent on freedom to provide services. application, and then instruct another agent to handle all the examination pro- cedure which follows. It argues that ser- vices provided by a patent agent invariably involve a complex activity requiring regu- lar, periodical and continuous acts. Such a situation justifies a different classification of the services in question. It follows that these services can be provided only in a stable and continuous manner in the host Member State. 26. The Italian Government also claims that the reason for the restrictions is a desire to reestablish a measure of equality between Italian patent agents and those established in other Member States, par- ticularly in Germany and the United King- dom. It states that the latter are already in an advantageous position from a linguistic and geographical point of view. This cre- 25. The Italian Government states that, ates a situation in which free competition is even if these services can be treated as distorted.

4 — Ibidem, paragraph 27. 3 — Case C-55/94 Cebbard [1995] ECR I-4165, paragraph 26. 5 — Ibidem, paragraph 25.

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OPINION OF MR LÉGER — CASE C-131/01

patent agent being carried out on a tem- against service providers established in porary basis within the meaning of the another Member State but also the abol- third paragraph of Article 50 EC. More- ition of any restriction, even if it applies to over, the Italian Government appears by national service providers and to those of implication to recognise this, since it other Member States alike, which is liable restricts itself to claiming that the occa- to prohibit, impede or render less advan- sional exercise of this activity would seem tageous the activities of a service provider unreasonable since the effectiveness of the established in another Member State where task of the service provider would be he lawfully provides similar services. 6 prejudiced. In so doing, it recognises that the temporary exercise of that activity is possible, although undesirable.

34. It must therefore be held that the provisions of Article 49 EC et seq., and in 37. The Court has invariably held that the particular those of the third paragraph of requirement imposed on an economic oper- Article 50 EC, apply to the activity of ator established in a Member State who patent agent when it is carried out on a wishes, as a provider of services, to carry temporary basis. on an activity in another Member State to be entered on the latter's trade register constitutes a restriction within the meaning of Article 49 EC. 7

39. The Court has held that, even if there is no harmonisation in the field, such a restriction on the fundamental principle of freedom to provide services can be based 42. In the present case, the national legis- only on rules justified by overriding lation in question seeks to guarantee the requirements relating to the public interest quality of work carried out and to protect and applicable to all persons and under- the users of these services. This objective takings operating in the territory of the host must in fact be regarded as capable of Member State, in so far as that interest is justifying a restriction on freedom to pro- not safeguarded by the rules to which the vide services. However, it is my opinion provider of such a service is subject in the that the measures adopted to achieve this Member State where he is established. 8 objective exceed what is necessary. I con- sider that the Italian Government has infringed the principle of proportionality.

45. As regards the impossibility of moni- toring the competence and the occasional and temporary nature of the activities of A — Arguments of the parties agents acting before the Italian Patent Office, I am of the view that other measures that are less restrictive, but equally suitable and that better respect the right of freedom to provide services, could be found. For example, the various agents could be asked to prove that they meet the conditions required to work as patent agents. 12 Simi- larly, the host Member State could provide for temporary, automatic enrolment on a register, provided that this neither delayed the provision of services nor rendered their provision more difficult in any way. 13 47. The Commission claims that in so far as Article 2 of Decree No 342 of 30 May 1995 also imposes a requirement to have a residence or place of business in Italy as a condition of entry on the register of patent agents authorised to carry on their pro- 46. It follows from the above that the first fession in that Member State, except in the complaint is well founded. case of nationals of States which allow Italian citizens to be entered on their own registers without fulfilling that require- 12 — See by analogy Case C-101/94 Commission v Italy [1996] ment, it also constitutes an unjustified ECR I-2691, paragraph 22. restriction on the principle of freedom to 13 — See by analogy Case C-298/99 Commission v Italy [20021 ECR I-3129, paragraph 62. provide services.

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COMMISSION v ITALY

52. As far as the reciprocity provision is concerned, it must be held that given the wide terms in which it is expressed it addresses not only future extra-Community situations, but also current, intra-Commu- nity situations. It should be noted that 50. The Italian Republic submits that the under present Italian legislation, service reciprocity condition must be understood providers established in other Member as expressing the will of the Italian legis- States are deprived of the opportunity lature to cater for future situations in which freely to provide their services in Italy if agreements with non-member countries they are not first entered on the register of would allow the matter to be regulated in patent agents and do not have a residence a different way. The Italian Government or place of business in that Member State. explains however that it is ready to modify There is only one exception to this rule, this condition, but considers that the point namely where the Member States in which in issue is utterly marginal and purely they are established allow Italian citizens to formal. be entered on their registers without those

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citizens having to show evidence of a 55. It follows that that requirement may be residence or place of business in that regarded as compatible with Articles 49 EC country. According to the Court's settled and 50 EC only if it is established that in case-law, a Member State cannot plead the field of activity concerned there are failure to respect the principle of reciproc- imperative reasons relating to the public ity or rely on a possible infringement of the interest which justify restrictions on the Treaty by another Member State to justify freedom to provide services, that this inter- its own default. 14 est is not already protected by the rules of the State of establishment and that the same result cannot be obtained by less restrictive rules. 16

54. As regards the obligation to have a residence or place of business address in the host Member State, it should be noted that there is settled case-law in terms of which a requirement that an economic operator, 57. In my view, these reasons may justify already established in another Member restrictions on the principle of the freedom State and wishing to provide services on a to provide services. However, I am of the temporary basis, should have a residence or view that the requirement to have a resi- place of business in the State in which the dence or place of business is dispropor- services are to be received constitutes a tionate in that it involves expenses and serious restriction on freedom to provide other unnecessary disadvantages for a pat- services. 15 ent agent established in another Member State. Measures that are less restrictive but equally effective and that better respect the 14 — See Case C-101/94 Commission v Italy, cited above, paragraph 27. 15 — See, for example, Case 252/83 Commission v Denmark [1986] ECR 3713, paragraph 18. 16 — Ibidem, paragraph 19.

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COMMISSION v ITALY

— order the Italian Republic to pay the costs.

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