Keurkoop BV v Nancy Kean Gifts BV (144/81)

Second question

According to Keurkoop the second question is so worded as to convey the impression that Nancy Kean Girts filed the design for the handbag in question not only in the Benelux countries but also in other Member States. However, Nancy Kean Gifts filed the design only with the Benelux Designs Office.Keurkoop notes that the second question, which adopts the terms of its last ground of appeal, is no longer of any interest in so tar as Keurkoop's aim was to urge the national court, should Nancy Kean Gifts plead in the proceedings on appeal that there was a legal relationship with Ambassador or Siegel, or both, under which it was authorized to file the design in the Netherlands, to take into account the fact that the handbag had perhaps been lawfully marketed in another Member Sute by Ambassador or Siegel, or both, or with its or his consent. As the Gerechtshof has accepted that Nancy Kean Gifts was not entitled to file the design in its author's name, it follows, in Keurkoop's view, that'the fourth ground of appeal and, consequently, the second question put to the Court, is no longer of any importance.Keurkoop considers, however, that the Court might take advantage of the second question, as worded, and rule on the question whether in other Member Sutes there are undertakings which, like Nancy Kean Gifts, exercise independently on their territori. the right in the design in respect of the Ambassador handbag, without any action against them on the pan of Ambassador. Such a situation, which would be contrar. to Article 85 of the Treat), might possibly be condemned by the Court.The Commission considers that the answer to the second question turns on the point whether or not marketing in the Member Sute of exportation was carried out by the proprietor of the right in the country of importation or with his consent.If the answer to that point is in the affirmative the Commission observes that according to consistent case-law of the Court (cf. inter alia Case 187/80 Merck v Stephar [1981] ECR 2063, Case 15/74 Centrafarm v Sterling Drug [1974] ECR 1147, Case 119/79 Terrapin [1976] ECR 1039) the right in the design is exhausted. If the answer to the point is in the negative the proprietor of the right will be entitled to resist the importation of such products (Case 24/67 Parke Davis [1968] ECR 55 and Case 15/74 Centrafarm v Sterling Drug, cited above) unless such action in fact constitutes a disguised restriction on trade between the Member Sutes.The Commission reserves the right to discuss this problem during the oral procedure as the material contained in the file does not of itself make such an analysis possible.According to the Netherknds Government the fact that marketing in the Member Sute of exportation does not infringe the rights of the person filing the design in the Member Sute of importation may be the consequence of two situations, that is to say, that in the Member Sute of exportation either there is no possibility of protecting a design or protection has not been requested.If. in the latter case, the same conclusion were arrived at as in the event of marketing in the Member Sute of exportation being carried out with the consent of the proprietor of the exclusive right, a person filing a design in one or more Member States would be forced to seek protection for the design in all the Member States, failing which he would have no means of protecting himself against parties infringing his rights.Such a solution would, in the view of the Netherlands Government, have the effect 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 inception”.The Netherlands Government stresses that, according to Article 81 of the Convention for a European Patent for the Common Market, signed in Luxembourg 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 States by the proprietor of the patent or with his express consent. It suggests that the second question be answered in the affirmative if such consent exists and in the negative if it does not.The French Government shares this view to some extent but none the less emphasizes that too strict an application of the solutions arrived at bv the Court, inter alia in Case 24/67 Parke Davis and 187/89 Merck v Stephar, might give rise to forms of conduct which would run directly counter to the objectives of the Treaty In order to preveni their right from being exhausted undertakings 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 systematically leave the market in those States to their competitors, which would distort competition.The French Government concludes that so long as the laws on designs are not harmonized and inasmuch as the Court cannot accept any breach of the principles of free movement and free competition, effect should be given, in pursuance of Article 36, to national laws protecting industrial propert) rights.The United Kingdom states that in Case 24/67 Parke Davis and in Case 119/75 Terrapin, the Court upheld the application of national industrial property rights where there was no connection between the goods produced by the proprietor of the industrial property right and those marketed in another Member State without his consent.According to the United Kingdom the second question should be answered in the negative in so far as, on the one hand, the marketing by Keurkoop concerns products which that company obtained in a Member State of the Community other than that in which the proceedings for an injunction were brought and, on the other hand, the marketing in the latter Member State does not infringe any right of Nancy Kean Gifts. It considers that a different answer would constitute a radical development of Community law and would all but destroy the value of any national industrial property right which was not matched by equivalent rights in all Member States.