• EUROPEAN PERSPECTIVES

    Jeux Sans Frontières

    A recently reported design case (Commission of the European Communities v French Republic) brought before the European Court of Justice is likely to have an impact on trade mark cases with similar fact situations.

    In this case, the facts were as follows. The spare parts for French makes of motor vehicles enjoy various types of design protection in France. Because the design laws of the European Union are not yet fully harmonised, these French spare parts do not have similar, or indeed any such, protection in either Italy or Spain. It follows that such French spare parts can be legitimately manufactured in Spain, exported to Italy and then sold in that country. However, in order to reach Italy from Spain, at least by land, one has to travel through France.

    Under French intellectual property law, the sale, manufacture, importation and possession of counterfeit goods in France constitutes a criminal offence. On the written request of an IP right owner, French customs authorities may detain allegedly counterfeit goods for a period of up to 10 days. Furthermore, on the basis of a 1990 judgement (Asin Crespo Ricardo v Ministère Public), the French authorities took the view that even goods that were merely in transit were legitimate targets for detention by the customs authorities.

    The European Automobile Panel Association took exception to the French authorities’ detention of Spanish made spare parts (for French cars). They therefore lodged a complaint with the European Commission. The Commission agreed that the French action in relation to the Spanish spare parts constituted an unjustifiable impediment to the free movement of goods and informed the French authorities accordingly. After protracted correspondence between the parties, the position at the Spanish/French border remained unchanged.

    The Commission therefore brought an action against France before the ECJ seeking a declaration that the actions of the French customs authorities were in breach of Article 28, formerly Article 30, of the EC Treaty (dealing with the free movement of goods).

    The Court found in favour of the Commission and that France had failed to fulfil its obligations under Article 28. The ECJ ruled as follows:

    • Council Regulation (EC) 3295/94 (as amended by Council Regulation 241/99) allows the owners of EU intellectual property rights to arrange the seizure of counterfeit or pirated goods by the customs authorities of EU member states, but only the seizure of goods which come from non-member countries. The Regulation is not applicable to goods which originate in an EU member state.

    • Intra-Community transit does not form part of the specific subject matter of design rights, since it does not involve the use of the appearance of the protected design. Previous ECJ case law, such as IHT Internationale Heiztechnik v Ideal-Standard, dealing with the putting of goods into circulation for the first time related to the marketing of the goods. The mere physical transportation of the goods did not amount to putting them into circulation.

    • Since the manufacture and marketing of these motor vehicle spare parts are lawful in Spain and Italy and transit through France does not form part of the specific subject-matter of French design rights, the detention of these products by French customs authorities to prevent their transit through France is not justified.

    • An (up to) 10-day detention period, merely to investigate the origin and destination of goods in transit, cannot be justified.