Opinion of Mr Advocate General Capotorti

Mr President,

Members of the Court,

1. In Case 102/77 Hoffmann-La Roche v Centrafarm (judgment of 23 May 1978) the Court had to deal with a case in which the Netherlands importer of a proprietary medicinal product, manuactured and sold in a number of Member States, re-packed the product, which had been imported from the United Kingdom, in new packages but subsequently affixed to the new packing the same trade-mark which the manufacturer had registered in the various Member States.

2. First of all I should like to stress that the problems raised by the questions in this case must be examined from the point of view that the two products concerned are in essence the same. In the order making the reference the Rotterdam court suted that the therapeutic effect of the Seresta tablets is similar to that of the Serenid tablets. The composition is not exactly the same; there is inter alia a difference in the taste. However, in putting the questions to which the Court is asked to reply, the Netherlands court referred to a single article, a single product.

3. The key to the problem raised by the national court in its first question lies in Anide 36 of the Treaty of Rome. It is acknowledged — and it was recently confirmed by the Court in its judgment in Case 102/77 to which I have already referred — that that provision, which lays down an exception to the principle of the free movement of goods (and in particular to Article 30), allows inter alia prohibitions or restrictions on imports which are justified on grounds of the protection of industrial and commercial property; however, the exception extends no further than safeguarding the rights which constitute the specific subject-matter of that property. It is equally jus receptum that the specific subject-matter of a trade-mark consists in guaranteeing to its proprietor the exclusive right to use it with regard to a given product, to be the first to put it on the market and thus to protect it against competitors who may wish to take advantage of the status and reputation of the trade-mark by selling products illegally bearing that mark (paragraph 7 of the decision in the above-mentioned judgment). Finally, an essential function of a trade-mark is acknowledged to be to guarantee to the consumer the identity of origin of the prod un in such a way that it should not be confused with others of different ongin (see the above-mentioned judgment).

4. However, Centrafarm has cast doubt on the lawfulness, from the point of view of Community law, of the original situation created by American Home Products through haring registered two different trade-marks in two different Member States for a single product. More precisely Centrafarm asserts that to allow one or more connected undertakings which have registered in different Member States dinerent trade-marks for a single product to take advantage of tne difference between those trade-marks to prevent third-party importers from competing with the proprietor of the trade-mark in conditions of complete equality is contrary to the provisions of Community law regarding the free movement of goods. In this respect reference is made to the principle laid down by the Court according to which Article 36 will not permit a right to a trade-mark registered in various Member States in the name of undertakings belonging to the same group to be asserted so as to prevent a parallel importer from selling in the importing State, under that trade-mark, a product which is also marked and lawfully put into circulation in another country in the Community (see the aforementioned judgment of 31 October 1974 in Case 16/74 Centrafarm v Winthrop).

5. We still have to examine the problem in the light of the last sentence of Article 36: the one according to which prohibitions or restrictions on imports exceptionally allowed by that article (and amongst others therefore protection of trade-marks) shall not … constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States. In the judgment of 23 May 1978, Hoffmann-La Roche v Centrafarm, to which I have already referred several times, the Court has already held that behaviour on the part of the proprietor of a trade-mark, which would in principle be justified by the first sentence of Article 36, constitutes a disguised restriction on trade between Member States within the meaning of the above-mentioned provision where it is established that the use of the trade-mark right by the proprietor, having regard to the marketing system which he has adopted, will contribute to the artificial partitioning of the markets between Member States (it is to be noted however that, in that judgment, the condition referred to is included with other conditions).

6. Having said this, and without wishing to interfere in the freedom of assessment of the national court, I think it is appropriate to add a few observations with regard to the difficult question of the objective justification for a plurality of differentiated trade-marks for one and the same product.

7. It is much easier to reply to the second question on which a preliminary ruling is requested. Council Directive No 65/65 of 26 January 1965 regulates essentially the conditions and detailed rules for the issue, suspension and revocation of authorization to place proprietary medicinal products on the market. It does not seem to me therefore that it can have any effect on the application of Article 36 of the Treaty in relation to trade-mark rights. Hence the conformity or otherwise of national rules to that directive cannot have any influence on the answer given to the first question. The observations submitted in this respect also make it clear that in a matter of the kind under consideration here the fact that a third-party importer may sell the product in the Sute of importation under a name different from the original one (but which must not be that used by the group of producer undertakings in that State), would not alter the terms of the problem or accordingly of the answer to be given to the court which has sought guidance.

8. Finally, for all the above reasons I recommend that the Court, in reply to the questions submitted by the Arrondissementsrechtbank, Rotterdam, for a preliminary ruling by order of 19 December 1977 should rule as follows:

1 Translated Iron, the Italian