CASELEX:EU:2000:5 – IP Law – protection of industrial and commercial property

A Member State failed to fulfil its obligations under Articles 30 of the EC Treaty (now, after amendment, Article 28 EC) when it detained presumably counterfeit goods under customs control on the pretext of protecting the registered design right and copyright of the goods. However, because intra-Community transit did not involve the use of the appearance of the goods’ protected design, the transit did not form part of the specific subject-matter of the protected rights of the goods.

The applicant, the Commission of the European Communities (the Commission), received a complaint from the European Automobile Panel Association that the customs authorities of the defendant, the French Republic (France), had detained spare parts for motor vehicles that had been lawfully manufactured in Spain and that were intended, following their transit through France, to be placed on the market in Italy. In its defence, France explained that its customs authorities had detained the goods because the spare parts were intended for French makes of motor vehicles and were, therefore, counterfeit goods that infringed registered design rights and copyrights protected under its Intellectual Property Code (Code de la Propriété Intellectuelle (the IP Code)) and that the detention was to enable the proprietors of the rights to take the necessary steps to protect their rights. 

The Commission, being dissatisfied by France’s explanation, issued a formal notice followed by a reasoned opinion to France, stating that such detention under customs control impeded the free movement of goods, as the spare parts were not intended to be marketed in France. In response, France iterated that the purpose of detaining the presumably counterfeit goods was essentially to protect industrial and commercial property of the goods within the meaning of Article 36 of the EC Treaty (now, after amendment, Article 30 EC). In light of France’s response and its non-compliance with the reasoned opinion, the Commission applied for a declaration that France had failed to fulfil its obligation under Article 30 of the EC Treaty (now, after amendment, Article 28 EC) by implementing, pursuant to its IP Code, a procedure for detention of goods under customs control. 

The Commission submitted that such procedure impeded the free movement of goods. It argued that the protection of industrial and commercial property did not justify the detention of goods in transit, since mere transit did not affect the specific subject-matter of the protected right. France, however, contended that in its territory, spare parts were protected by the design right and that every such part which was manufactured, placed on the market without the consent of the proprietor of that right, and found in its territory, whether it was intended for import or export or was in transit, was counterfeit, and that the detention of the goods by its customs authorities was justified.