Opinion of Mr Advocate General Mischo

Mr President,

Members of the Court,

1. By virtue of the questions submitted by the tribunal civile e penale (Civil and Criminal Court), Milan, in Case 53/87 (Consorzio italiano della componentistica di ricambio per autoveicoli, hereinafter referred to as the Consorzio, and Maxicar v Renault) and by the High Court of Justice, London, in Case 238/87 (Volvo v Veng) for a preliminary ruling, the Court is essentially confronted by the problem whether a motor vehicle manufacturer who is the proprietor of protected rights in respect of designs and models of bodywork components for a vehicle manufactured by him may, without infringing Community law, prevent the marketing by independent producers or traders of copies of those bodywork components.

2. According to the most radical view, put forward by the Consorzio and Maxicar before the tribunale civile e penale, Milan, a manufacturer cannot be allowed in any circumstances to rely on protected rights of that kind in order to prohibit them from manufacturing, selling, exporting or importing such parts.

3. A less extreme view is taken by Veng before the High Court of Justice, London. Veng contends that any motor vehicle manufacturer who is entitled to obtain protective rights in respect of spare parts is obliged in all circumstances to grant licences for manufacture or importation to independent traders, provided that the latter pay a fair royalty to the manufacturer.

4. In the present opinion, which relates to the questions submitted by the Milan Court, I shall consider the problem more particularly, but not exclusively, with reference to the provisions of the Treaty concerning the free movement of goods. In my Opinion in Case 238/87 I shall concentrate above all on the question of compulsory licences.

I — The first question

5. The first question submitted by the tribunale civile e penale, Milan is as follows :

6. Let me start by pointing out that the dispute in the main proceedings has certain features which are rather different from those of the other cases on industrial property with which the Court has had occasion to deal.

7. It is not a case here of a proprietor of protective rights defending his territory against imports, but of independent producers attacking that proprietor by challenging his entitlement to exercise his exclusive rights against them; the Consorzio and Maxicar demand the right to manufacture the parts in question themselves and subsequently to export them.

8. I shall return later to this challenge which, to some extent at least, calls in question the very existence of industrial and commercial property rights. First, I should like to consider the problem of the exportation of spare parts manufactured or capable of being manufactured by the plaintiffs in the main proceedings since it is that aspect of the question submitted which relates to the provisions of the Treaty concerning the free movement of goods.

9. It is immediately apparent that exports are affected only to the extent to which they are made impossible by the prohibition of manufacturing the parts in question. A flow of exports to the other Member States would merely be a potential consequence if the action directed against the prohibition of manufacture were to succeed.

10. The plaintiffs do not rely upon any specific provisions of Italian law

11. We can therefore conclude at this early stage that the prohibition laid down by Article 34 of the Treaty is not an issue in the present case. There is no restriction on exports within the meaning of Article 34 that ought to be examined in order to determine whether it might be justified on grounds of ... the protection of industrial and commercial property within the meaning of Article 36.

12. Seen in that light, the dispute in the main proceedings thus concerns a situation wholly internal to Italy: two Italian companies claim the right to manufacture in Italy components covered by protective rights in ornamental designs in Italy.

13. But the reference made by the national court to the sale of spare parts may, strictly speaking, be interpreted as referring also to a case where parts not manufactured by Régie Renault are imported into Italy and are prohibited from being marketed there.

14. The Consorzio in fact stated (p. 59 of its observations) that its members also market spare parts manufactured by third parties, and some of those parts come from abroad (from Spain, for example). In those circumstances, I think the problem must also be considered from the viewpoint of prohibitions of imports.

15. The Court has consistently held, and in particular in its judgment in Keurkoop v Nancy Kean Gifis:

16. However, as the Court points out in the next paragraph of that judgment, prohibitions and restrictions must, by virtue of Articie 36, be justified inter alia on grounds of the protection of industrial and commercial property and must not constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.

17. As is apparent from the first paragraph of the grounds of the Milan Court's judgment, the latter is well acquainted with those cases and the question which is submitted refers to the possible existence of a disguised restriction on trade between Member States.

18. The Milan court examines the Italian legislation concerning the conditions for granting protective rights in ornamental designs and comes to the conclusion that it is in fact possible in Italy to obtain such protective rights in respect of the various components making up the bodywork of a car (in addition to the rights registered in respect of the bodywork as a whole), but it nevertheless takes the view that the possibility must be considered as to whether the relevant national rules conflict with Community rules (paragraph 3 of the grounds of the order for reference).

19. The question submitted thus clearly goes beyond the simple question whether the exercise of the intellectual property right is compatible with the specific purpose thereof, as defined by the Court. The national court considers that there appears to be some foundation for the question raised by the plaintiffs with regard to the lack of justification for protective rights which, since they do not satisfy the relevant functions of the protection of industrial and commercial property laid down in Article 36 of the EEC Treaty, may constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States (end of p. 9 of the English translation of the order for reference).

20. Can the Court undertake an examination of that kind, having regard to its previous decisions in that field? In my opinion, the following distinction must be drawn :

21. 1 consider that it is clear, or at least has been since the Warner Brothers judgment, that in such a case the Court is entitled to consider whether the legislation in question may be regarded as justified on the ground of protection of industrial and commercial property within the meaning of Article 36. In that judgment, the Court stated, inter alia, that

22. There is, therefore, nothing to prevent the Court from similarly considering whether legislation which allows the prohibition of imports of unauthorized copies of bodywork components is justified on such grounds, and whether it constitutes arbitrary discrimination or a disguised restriction on trade between Member States.

23. As I stated earlier, the Milan Court has serious doubts as to the compatibility with the Treaty of the rules in question.

24. It points out in the first place that the basis of the protection of designs and models is the need to stimulate economic development through the search for novelty and technological progress and aesthetic industrial design and that to grant protection for spare parts for the bodywork of motor vehicles is not in conformity with that function.

25. In fact, according to the Milan Court, the monopolistic position resulting from the registration of ornamental designs for each part making up the bodywork does not constitute a return for research and progress achieved from the aesthetic point of view, since that was exhausted by the overall design of the car, which is at the same time protected by other registered rights. The exclusion of competition from other undertakings and the higher price payable to the proprietor of the rights as a result of his monopoly would appear to be advantages which are unconnected with the requirements of economic progress underlying the provisions adopted in order to protect industrial property.

26. It is clear that the national court and the plaintiffs in the main proceedings, who were the first to expound that view, do not have in mind here the theory of the exhaustion of intellectual property rights developed by the Court of Justice, details of which I have already given.

27. When the national court and the plaintiffs in the main proceedings use the expression exhaustion of the return, they are referring to the function which the Court assigns to industrial and commercial property, namely that of obtaining a reward for [the inventor's] creative effort (see in particular the judgments in Pharmon v Hoechst and Centrafarm v Sterling Drug, cited earlier).

28. According to them, a spare part is not the subject of an effort of aesthetic creativity specific to it and distinct from the effort made in designing the bodywork as a whole, and it cannot therefore per se be the subject of the design right, still less so because the effort of aesthetic creativity made when the bodywork as a whole was designed is already sufficiently rewarded by the grant of an exclusive right covering the totality of the bodywork. Accordingly, the grant, in addition thereto, of a right of that kind covering the component would give rise to a kind of a double return to the proprietor of the right. That view calls for the observations which follow.

29. In Italy ornamental designs are granted under legislation which is incontestably intended to protect industrial and commercial property within the meaning of Article 36.

30. Moreover, even if the act of intellectual creation capable of giving the product an aesthetic value related only to the complete design of the car and even if the form of a bodywork component was never the subject of separate study from the aesthetic standpoint (a view which is challenged, in particular by the German Government) it would nevertheless be fair, in my opinion, to say that not only the bodywork as a whole but also each of its components is the result of the creative or innovative effort brought to bear by the manufacturer.

31. As regards the question of the possibility of a double return for that creative effort or amortization in excess of the sums invested in research and development and the perfecting of new models, I do not see in what way a national legislature would be exceeding the limits of the protection of industrial and commercial property if it allowed a car manufacturer to apportion that return or amortization between the price of the vehicle as a whole, on the one hand, and the price of the spare parts, on the other. Admittedly, it may be that the prices of spare parts are excessive and that it is the manufacturer's intention to obtain a double return. However, this question is tied up with the problem of abuse of a dominant position which I shall consider in due course when dealing with the second question submitted by the Italian Court.

32. It follows, in my opinion, from the foregoing considerations that the grant of separate protection for bodywork components must be regarded as being in conformity with the function assigned by the Court to industrial and commercial property, which is that of providing a reward for the [inventor's] creative effort.

33. Against that background, I should also like however to draw the attention of the Court to the very detailed inquiry carried out by an independent public authority, the United Kingdom Monopolies and Mergers Commission, concerning the policy pursued by a large car manufacturer with respect to bodywork spare parts. (The report in question is attached as Annex 2 to the observations of the Consorzio.) Having established that in the specific case with which it was concerned the criteria of the United Kingdom legislation on anticompetitive conduct and the public interest were fulfilled, the Monopolies and Mergers Commission proposed a limitation of five years for the validity of exclusive rights granted in respect of bodywork components, but it in no way challenged the principle whereby a manufacturer can obtain industrial property rights and receive the benefit, when selling those parts, of a return for his innovative efforts and his research and development costs.

34. Finally, turning to the problem of protection of spare parts for cars, we must not forget that the same problem may arise tomorrow regarding all other products which are made up of a set of separately manufactured components or even components which coexist as parts of a whole without coming into physical contact with each other. Indeed, who could deny — as was pointed out by Professor Breier in the study submitted by Renault — that the pieces making up, for example, a dinner service displaying a certain originality or a set of drawing-room furniture created by a great decorator can each be protected individually? If it were otherwise, the protection obtained in respect of the service or set of furniture as a whole would be deprived of any practical effect.

35. But the Court does not need to express a view as to whether it is appropriate or necessary to protect car bodywork components. It is merely called upon to decide whether legislation of the type in question here appears to be justified on grounds of protection of industrial and commercial property within the meaning of Article 36. In view of the foregoing considerations, I consider that such a finding would be well founded.

36. Secondly, the question remains to be examined whether a prohibition of imports based on legislation of that kind constitutes a means of arbitrary discrimination or a disguised restriction on trade.

37. However, the application of legislation which allows the registration of protective rights in ornamental designs not only for bodywork as a whole but also for the various components thereof does not seem to me to be of such a nature as to maintain or establish artificial partitions within the common market (see Keurkoop v Nancy Kean Gifis, cited above, paragraph 24).

38. In the first place, the right to register protective rights in respect of spare parts is not reserved to Italian motor vehicle manufacturers, since it is in fact a foreign make which is at issue in the main proceedings. The prohibition on the manufacture of copies of original Renault parts or parts covered by protective rights manufactured by any other maker, and the consequent impossibility of exporting them, affect all companies established in Italy and in particular Italian companies.

39. Régie Renault is free to export from Italy any spare parts which it may manufacture in that country, and to import into Italy parts manufactured by its parent company or its subsidiaries in the other Member States. Likewise, every other car maker may export or import its own spare parts. Any private individual may also freely import original parts of any make whatsoever purchased by him in another Member State or export those purchased in Italy.

40. Only the importation of spare parts which are unauthorized imitations of parts covered by protective rights in Italy can be prohibited. Such a prohibition of importation cannot have as its object or effect the protection of Italian manufacturers of the same imitations because production of that kind is prohibited in Italy by virtue of those same protective rights. It may therefore be concluded that prohibitions based on legislation of that kind constitute neither a means of arbitrary discrimination nor a disguised restriction on commerce between Member States.

41. For all those reasons, I propose that the Court should answer the first question submitted by the tribunale civile e penale, Milan, as follows:

II — The second question

42. The tribunale civile e penale, Milan, has submitted a second question to the Court in the following terms:

43. By formulating its question in those terms the national court takes for granted that car manufacturers always hold a dominant position in the market for spare parts for the cars which they produce — an assertion which in my opinion remains to be tested — and that they abuse that position merely by registering protective rights in respect of the various bodywork components for their vehicles.

44. I should therefore prefer to take the question to have the following meaning:

45. Before that question can be answered, it is necessary to determine, in the first place, whether a motor vehicle manufacturer holds a dominant position in the market in spare parts for vehicles of its manufacture and, for that purpose, to establish whether that market is in fact the relevant market.

46. It has been claimed in that respect that spare parts form part of a wider market which includes both motor vehicles and spare parts for them. In view of the fierce competition between motor vehicle companies, the price of spare parts is one of the factors taken into consideration by purchasers.

47. There is no doubt that certain purchasers of cars, before making their choice, also obtain information as to the price of spare parts, and that factor may influence their decision. It is also certain that the owner of a vehicle of a particular make may, when deciding to change car, buy one of another make because the spare parts for the first car proved, in his opinion, excessively expensive. If the time factor is also taken into account, the competition prevailing in the new-car market thus also includes an element of competition regarding spare parts.

48. The fact nevertheless remains that the owner of a vehicle who, at a given moment, decides to repair the bodywork of his vehicle rather than purchase another, is obliged to purchase (either directly if he repairs the car himself, or indirectly through a garage in the manufacturer's network or through an independent repairer) a bodywork component which is identical in shape to the original part. Consequently, for the owners of a vehicle of a particular make the relevant market is the market made up of the bodywork components sold by the manufacturer of the vehicle or of the components which, being copies, are capable of being substituted for them.

49. Therefore, I likewise cannot share the other views which have been put forward in this case, namely that the market to be taken into account is the market in spare parts for cars in general or even the market which has grown up around the manufacture and maintenance of motor vehicles.

50. It must also be stated that a number of weighty arguments suggest that a vehicle manufacturer may hold a dominant position in the relevant market, even if such industrial property rights as he may have acquired are disregarded.

51. The manufacturers' distribution network is in fact the first source of supply which comes to the mind of someone seeking a component because he feels sure that he will obtain that component there immediately or within a short period. Car manufacturers in a given country maintain, at least in that country, a fairly close-knit distribution network. Moreover, the manufacturer's guarantee depends upon the use of so-called original parts the marketing of which is controlled by the manufacturer. At a time when manufacturers offer antirust guarantees of up to six years, that fact is not without significance. For their part, independent producers only enter the market some time after a new model is brought out because they need to time to to undertake the reverse engineering necessary to enable them to produce copies of the original part. The parts produced by them do not enjoy the prestige associated with the original part label and the places where they can be obtained are less well known.

52. But in fact it does not seem to me to be necessary to establish beyond doubt whether or not a car manufacturer enjoys a dominant position, even if such industrial property rights as he may possess are disregarded. The situation referred to by the national court relates to bodywork components for which the manufacturer actually has protective rights in an ornamental design. The national court has also made it clear that those designs are valid according to the criteria laid down in the national legislation.

53. It is apparent from previous decisions of the Court that the mere possession of an industrial property right does not automatically imply that the holder thereof occupies a dominant position within the meaning of Article 86. In the Sirena and Deutsche Grammophon cases the Court held that, for the proprietor of an industrial property right to hold a dominant position, he must be in a position to prevent the maintenance of effective competition over a considerable part of the relevant market, having regard in particular to the existence and position of any producers or distributors who may be marketing similar goods or goods which may be subsituted for them.

54. But in the present case, the industrial property rights relate to bodywork components for a motor vehicle and the only products which can be substituted for them are products having exactly the same shape as the parts produced by the manufacturer. As the Commission rightly pointed out in its observations in Case 238/87 (reference for a preliminary ruling by the High Court of Justice, London, in the case of Volvo v Veng), in those circumstances no substitutable goods exist which do not encroach upon the registered rights of the manufacturer. Accordingly, as soon as the proprietor enforces his protective right in the ornamental design and the substitutable parts can no longer be produced, it is beyond doubt that the manufacturer holds a dominant position in the market in bodywork components in respect of which he has registered protective rights, and which is, in the last analysis, the relevant market in this case.

55. The Milan court quite properly considered that that was the position and asked this Court whether the fact of registering protective rights in respect of the parts in question of itself constituted an abuse of that dominant position.

56. If proprietorship of protective rights is not of itself sufficient automatically to create a dominant position, a fortiori it cannot per se amount to abuse of such a position.

57. The previous decisions of the Court leave no room for doubt on this point. As early as 29 February 1968 in its judgment in Case 24/67 (Parke, Davis & Co. v Probei, Centrafarm and Others [1967] ECR 55, at p. 72), the Court stated

58. Further on, the Court stated that

59. The mere acquisition of an industrial or commercial property right (and the exercise of the corresponding rights without which Proprietorship of the ornamental design would be deprived of any practical utility) does not therefore constitute abuse of a dominant position. A further element is required.

60. That element cannot be the fact that competition from independent undertakings producing imitiation parts has been eliminated. The elimination of that competition is the necessary consequence of an industrial property right in respect of a product which can have no other form than that which was endowed upon it by its creator, the proprietor of the exclusive right.

61. The additional element or circumstance might, on the other hand, consist in discriminatory conditions of sale (refusal to supply spare parts to independent suppliers, for instance), or refusal to continue to manufacture spare parts for a vehicle no longer in production even though many vehicles of that type were still in use. But the case which comes most readily to mind is that of applying unfair prices within the meaning of subparagraph (a) of the second paragraph of Article 86. The applicant companies in fact maintain that the bodywork components produced by Renault are sold by the Renault concessionaires at exaggeratedly high prices.

62. Where a reference is made for a preliminary ruling, only the court before which the main action is pending is in a position to settle a question of that kind. It should be remembered, however, that in the Parke, Davis and Co. judgment (cited earlier) the Court declared that a higher price for the patented product as compared with the unpatented product does not necessarily constitute an abuse. This appears to mean that the inventor is entitled to recover not only his production costs in the strict sense and a reasonable profit margin but also his research and development expenditure.

63. As regards the bodywork components sold as spare parts the problem displays an unusual aspect in so far as part of that expenditure has probably already been recovered from the sale of new cars. It is therefore necessary, when fixing the prices of spare parts, to take due account of that factor. It is the responsibility of the national court hearing the main proceedings to establish whether or not that has been done.

64. It should be pointed out, finally, that if it were to be found that the monopoly enjoyed by motor vehicle manufacturers regarding spare parts produced by them and covered by protective rights frequently prompts them to abuse their dominant position or if the temptation to engage in such abuse were considered too strong, it would of course be open to the national egislatures or possibly to the Community legislature (by way of harmonization of national legislation) to regulate the exclusive rights in question by the means considered most appropriate.

65. In conclusion, I propose that the Court should give the following answer to the second question submitted by the Milan Court:

1 Translated from the French.

2 In addition to the documents before the Court, I have read with great interest the thesis entitled La protection des pièces de carrosserie automobile en droit communautairepresented in 1987 by Fabrice Picod to the Faculty of Law of the Jean Moulin University (Lyon III) under the supervision of Professor Azema.

3 But not against other motor vehicle manufacturers.

4 See in particular judgment of 8 November 1979 in Case 15/79 Groenveld v Produktschap voor Vee en Vlees [1979] ECR 3409.

5 See the judgment of 14 September 1982 in Case 144/81 Keurkoop v Nancy Kean Gifts [1982] ECR 2853, at pp. 2870 and 2871, paragraphs 18 and 24.

6 Judgment of 17 May 1988 in Case 158/86 Warner Brothers Inc. and Metronome Video ApS v Erik Viuff Christiansen [1988] ECR 2605, in particular paragraphs 11, 15 and 16.

7 In this respect, I would refer also to my Opinion of 28 April 1988 in Case 35/87 (judgment of 30 June 1988) Thetford v Fiamma [1988] ECR 3585, at p. 3594, paragraphs 20 and 23.

8 Judgments of 31 October 1974 in Case 15/74 Centrafarm v Sterling Drug [1974] ECR 1147, of 14 July 1981 in Case 187/80 Merck v Stephar and Exler [1981] ECR 2063, and of 9 July 1985 in Case 29/84 Pharmon v Hoechst [1985] ECR 2281.

9 Case 40/70 Sirena v Eda [1971] ECR 69, paragraph 16; Case 78/80 Deutsche Grammophon v Melro [1971] ECR 487, paragraph 16.