The French Code de la Propriété Intellectuelle (Intellectual Property Code), in so far as it provides for a procedure of detention under customs control at the request of the manufacturers entitled to the protection of their trade mark, is not consistent with Community law
The European Automobile Panel Association lodged a complaint with the Commission about the conduct of the French customs authorities who detain, at the frontier with Spain, spare parts for French makes of motor vehicles which are manufactured in Spain and which are intended, in particular, to be marketed in Italy.
French legislation (the Code de la Propriété Intellectuelle) provides for a procedure for detention by the customs authorities of goods presumed to be counterfeit, on a written application from the proprietor of the protected right. The French Cour de Cassation (Court of Cassation) has thus held on several occasions that spare parts for motor vehicles which are manufactured by a third person and which are merely circulating in French territory infringe the right of the proprietor of a trade mark or design, even if that product was lawfully manufactured in a Member State (for example, Spain) with a view to being lawfully marketed in another Member State (for example, Italy).
The Commission brought an action before the Court of Justice for a declaration that France had failed to comply with Community legislation on the free movement of goods.
The Court has held, firstly, that such a practice does indeed constitute a restriction on the free movement of goods: the detention of spare parts for a period of up to 10 days may delay the movement of those goods or even block their movement completely (where confiscation is ordered by the French court to which the matter may have been referred).
The Court has examined whether the restriction on the free movement of goods is justified.
The Court has found that the Community legislation in force does not permit such a procedure. Although the Member States may maintain their existing legal provisions on the protection of designs, those measures must none the less be compatible with the Treaty and, in particular, the free movement of goods within the Community.
The Treaty permits measures derogating from the principle of free movement where they are justified by the protection of rights which constitute the specific subject-matter of the industrial and commercial property.
The Court has distinguished, however, between the putting into circulation of a product, which forms part of that specific subject-matter, and its mere physical transportation, which does not. The Court has examined whether the proprietor of a protected design of spare parts has the right to prevent third parties from putting those products in transit without his consent. Since intra-Community transit consists in the transportation of goods from one Member State to another across the territory of one or more Member States, it does not, unlike manufacture, sale and importation, involve any use of the appearance of the protected design. The mere physical transportation of goods may not, therefore, be treated in the same way as the putting into circulation or the marketing of the goods concerned.
The Court considers that 10 days of detention is disproportionate in relation to the purpose of investigation of the origin and destination of the spare parts.
Accordingly, the French legislation has been held not to be consistent with Community law.
Unofficial document for media use, which is not binding on the Court of Justice. Languages available: English, French, German, Spanish and Italian.
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