Opinion of Mr Advocate General Reischl

Mr President,

Members of the Court,

Although there is already a wellestablished body of case-law on the question of the extent to which exceptions to the principle of the free movement of goods are permitted on the basis of national rights to a patent or trade mark, or of national copyright, these are the first proceedings for a preliminary ruling in which it is necessary to consider the question of the effects of the relevant provisions of the EEC Treaty on the exercise, by the proprietor of a national right in a design, of the powers vested in him.

Nano- Kean Gifts BV, a commercial undertaking whose registered office is at The Hague, sells amongst other things ladies' handbags imponed from Taiwan. On 23 April 1979, it filed the design for the handbag in question with the Benelux Designs Office.

A United States patent design in respect of a corresponding design has been in existence since January 1979. The application for it had already been filed in March 1977. The inventor is stated to be Mr Siegel from Arizona and the assignee to be Amba Marketing Systems Inc.

At the beginning of 1980, Keurkoop BV, a mail-order company whose registered office is at Rotterdam, offered for sale or even by way of gift ladies' handbags having the same or virtually the same appearance as the abovementioned registered design which were also directly imponed from Taiwan into the Netherlands.

Nancy Kean Gifts applied for and was granted on the basis of its exclusive rights under the Eenvormige Benelux-Wet inzake Tekeningen of Modellen [Uniform Benelux Law on Designs, hereinafter referred to as the Uniform Benelux Law], which entered into force on 1 January 1975, an interlocutory injunction ondering Keurkoop BV to refrain from manufacturing, importing, selling, offering for sale, exhibiting, delivering, using for industrial or commercial purposes or from holding in stock for one of those purposes ladies' handbags of the kind in question.

Keurkoop BV lodged an appeal against that injunction.

In its judgment of 20 May 1981 which led to this reference for a preliminary ruling, the Third Chamber of the Gerechtshof [Regional Court of Appeal], The Hague, held in substance, in the light of the facts of the case, that Nancy Kean Gifts was not the author of the design for the handbag and had not filed the design with the consent of, or on the basis of any legal relationship with, the author or any person entitled under him for the Benelux area.

From a legal point of view, the court making the reference has made the following findings, in particular in paragraphs 11 and 12 of its judgment. Contrary to the appellant's contentions, the meaning and purpose of Article 1 et seq. of the Uniform Benelux Law is not to reward the creative work of the author of the design. Instead, as Article 1 of that law makes clear, it is the altered appearance of a product serving a utility purpose which may be protected as a design. Accordingly, the law does not require the design to be the expression of a creative or anistie achievement. The purpose of that provision is to prevent the imitation for a specific period of designs chosen by industrial manufacturers and craftsmen. Thus, the industrial propeny right under Article 3 (1) of the Uniform Benelux Law arises, in principle, upon first registration and irrespective of whether the person filing the design is an industrial manufacturer, a craftsman or even the author of the design. If registration is effected without the consent of the author of the design or of the person who is to be regarded as the author under the Uniform Benelux Law, the author alone may, by vinue of Article 5(1), within a certain period lay claim to the registration or require its cancellation.

Since the appellant expressed the opinion that the provisions described were incompatible with Anieles 3C and 36 of the EEC Treaty and that the action for an injunction could not in any event have succeeded if it had obtained the handbags in question elsewhere in the Common Market, the Gerechtshof referred to the Court for a preliminary ruling under Article 177 of the EEC Treaty the following questions:

My opinion on those questions is as follows:

1 Translated from the German.

2 Judement of 15 June 1976 in. Case 51/75 EMI Records Limites v CBS United Kingaom Limited [1976] ECR 811. Judgment of 15 june 1976 in Case 86/75 EMI Records Limited v CBS Grammojon A/S [l976] ECR 871. Judment of 15 June 1976 in Case 96/75 EMI Records Limited v CBS Schaliplatten GmbH [1976] ECR 913

3 Juggment of 14. 2. 1980 in Case 53/79 Office National des Pensions pour Travailleurs Salariés v Florante Damiani [1980] ECR 273

4 Judgment of 8 June 1971 in Case 78/79 Deutsche Crobmarąte GmbH \Metro-SB-Crobmarąte (GmbH 6 Co. KG [1971] ECR 487

5 Judgment of 22 January 1981 in joined Cases 55 and 57/82 (Muss. I erineb membran GmbH and Kiel inter. njnonj. CEMA [1981] ECR 147.

6 Sec ludgmeni o! 29 February 1968 in Cut 24/76 Parke, Davu & Co. v Provet, Hette, Betntema-Interpharm arui Centralam [1968] ECR 55.

7 See for example Judgment of 31 October 1974 in Case 15/74 Ceni'jrjrm B1 and AJnajn de Preppers Steeling Drag in [1974]. ECR 1147 [parallel parents].. Judgment of 22 June 1976 in Case 119/75 Terranova Indusne C.A Kapterer & Co [1976] ECR 1939. Judgment of 8 June 1971 in Case 78/79 Dentsche t.rjmmnrho Metro usee footnote 1 at page 2879]. Judgment of 28 January 1981 in Joined Cases 55 and 57'k: GEMA see footnote 2 at page 2879].

8 Judgment of 14 July 1981 in Case 187/80 Merek & Co. in. v ļiefhar BV and Petrut Stephanin Exier [198ļ] FCR 2863

9 See Judement o' 18 February 1971 in Case 40/70 Vm EDA Srl ana Oters [1971] ECR 69. Judement of 13 July 1974 in Case 192/73 Van Zuylen hr'n Hag AG [1974] ECR 731