EMI Records v CBS Grammofon: ECJ 15 Jun 1976

ECJ Neither the rules of the treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common commercial policy, prohibit the proprietor of a mark in all the member states of the community from exercising his right in order to prevent the importation of similar products bearing the same mark and coming from a third country.
A trade-mark right, as a legal entity, does not possess those elements of contract or concerted practice referred to in article 85(1). Nevertheless the exercise of that right might fall within the ambit of the treaty if it were to manifest itself as the subject, the means, or the consequence of a restrictive practice.
A restrictive agreement between traders within the common market and competitors in third countries that would bring about an isolation of the common market as a whole which, in the territory of the community, would reduce the supply of products originating in third countries and similar to those protected by a mark within the community, might be of such a nature as to affect adversely the conditions of competition within the common market. In particular if the proprietor of the mark in dispute in the third country has within the community various subsidiaries established in different member states which are in a position to market the products at issue within the common market such isolation may affect trade between member states.

For article 85 to apply to cases of agreements which are no longer in force it is sufficient that such agreements continue to produce their effects after they have formally ceased to be in force. An agreement is only regarded as continuing to produce its effects if from the behaviour of the persons concerned there may be inferred the existence of elements of concerted practice and of coordination peculiar to the agreement and producing the same result as that envisaged by the agreement. This is not so when the said effects do not exceed those flowing from the mere exercise of the national trade-mark rights. And in particular when a foreign trader can obtain access to the common market without availing himself of the mark in dispute.
Although the trade-mark right confers upon its proprietor a special position within the protected territory this, however, does not imply the existence of a dominant position within the meaning of article 86 in particular where several undertakings whose economic strength is comparable to that of a proprietor of the mark operate in the market for the products in question and are in a position to compete with the said proprietor. Furthermore, in so far as the exercise of a trade-mark right is intended to prevent the importation into the protected territory of products bearing an identical mark, it does not constitute an abuse of a dominant position within the meaning of article 86 of the treaty.
In so far as the proprietor of a mark in the member states of the community may prevent the sale by a third party within the community of products bearing the same mark held in a third country, the requirement that such third party must, for the purposes of his exports to the community, obliterate the mark on the products concerned and perhaps apply a different mark forms part of the permissible consequences of the protection which the national laws of each member state afford to the proprietor of the mark against the importation of products from third countries bearing a similar or identical mark.


C-86/75, R-86/75, [1976] EUECJ R-86/75



European, Intellectual Property

Updated: 21 May 2022; Ref: scu.132296