QM Certificate in IP:
Competition Law
Lecture 9: Free movement and
intellectual property
Follow-up
Extraterritoriality
•Morris ‘Iron Curtain at the border: Gazprom
and the Russian blocking order to prevent the
extraterritoriality of EU competition law’ [2014]
ECLR 60
Damages claims
•Dunne ‘Courage and compromise: The
directive on anti-trust damages’ [2015] ELRev
581
Reading
• Marco Colino/Furse 21.4
• Jones and Sufrin, Chapter 10
• Stothers Parallel Trade in Europe, ch 2
• Oracle (formerly Sun) v M-Tech
[2012] UKSC 27
Further reading, esp on standards
TFEU and the Single/Internal
Market Ideal, Art 26(2)
“The internal market shall comprise an area
without internal frontiers in which the free
movement of goods, persons, services and
capital is ensured in accordance with the
provisions of the Treaties.”
•HMG ‘Review of the balance of
competence… services’ (2014), at
https://www.gov.uk/government/uploads/system/uploads/attachment_d
ata/file/332668/bis-14-987-free-movement-of-services-balance-ofcompetencies-report.pdf
Free Movement Articles
• Articles 34, 35 – Prohibit quantitative restrictions
on imports/export
• Article 36 – allows for derogation
• Art 56 – cross-border services (woollier), but
backed up by freedom of establishment Art 49
(ie permanent, with derogations in Arts 51 and
52) & Services Directive 2006/123/EC
• Article 345 –Treaty does not prejudice rules
governing systems of property ownership
• market integration/ non partitioning concerns in
competition law Arts 101,102
Free movement of goods – the
numbers
Art 30EEC=Art 28EC (imports)=Art 34 TFEU
Art 34EEC=Art 29EC (exports)=Art 35TFEU
Art 36EEC=Art 30EC(qualification)=Art 36
TFEU
Arts 34, 35 TFEU
34. “Quantitative restrictions on imports and
all measures having equivalent effect shall
be prohibited between Member States.”
35. “Quantitative restrictions on exports, and
all measures having equivalent effect, shall
be prohibited between Member States.”
Art 36
“The provisions of Articles 34 and 35 shall not
preclude prohibitions or restrictions on imports,
exports or goods in transit justified on grounds of
public morality, public policy or public security; the
protection of health and life of humans, animals or
plants; the protection of national treasures
possessing artistic, historic or archaeological value;
or the protection of industrial and commercial
property. Such prohibitions or restrictions shall not,
however, constitute a means of arbitrary
discrimination or a disguised restriction on trade
between Member States.”
The problem with IP: territoriality
plus Art 345 TFEU
• National patent gives its owner the right to prohibit
imports into the territory
• National trade mark registration gives owner the right to
prohibit use of the mark in course of trade in territory
• Programme licensed for broadcast in one M/S may be
received in another M/S where not licensed
• Differences between national rights causes difficulty for
cross-border trade (barriers to entry into another
Member State)
• This is fetter on free trade in goods or services
The solutions
•
Introduce Community-wide IP rights by
Regulation, eg
-
•
What about national rights?
• And what about remedies?
DHL Express France v Chronopost [2012]
The solutions
• Harmonising directives, eg
• use directly applicable provisions of Treaty
to govern exercise of the rights, eg
• develop concepts such as
– ‘specific subject matter’ (purposive
interpretation of the rights)
– ‘exhaustion’ of rights (single use within the
EU, for rights to make and sell)
EU Doctrine ‘Internal’ Exhaustion
• IP gives the power to prohibit or consent to
placing product on the single market, or to
market it oneself
• Has that power been exercised in the EU?
• Origins – Consten & Grundig - Parke Davis
• Emergence – Deutsche Grammophon
– Art 36 derogation limited
– DG had exhausted rights by permitting their
records to be sold abroad
Patents
Centrapharm v Sterling Drug
Merck v Stephar
Pharmon v Hoescht
Merck v Primecrown
Merck Canada Inc v Sigma Pharmaceuticals Plc [2013]
EWCA Civ 326; Ref to CJEU C-539/13 [2015]
Trademarks
•
•
•
•
•
•
•
Centrapharm v Winthrop
Terrapin v Terranova
Sebago v GB Unic
Zino Davidoff v A&G Importers
Van Doren + Q GmbH v Lifestyle Sports
Peak Holding AB v Axolin-Elinor
Class International BV v ColgatePalmolive Co
Copyright
•
•
•
•
Deutsche Grammophon
Warner Bros
Thuiskopie v Opus
Metronome
•
•
•
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Coditel but FAPL v QC/Murphy v Media Control
Criminal Proceedings against Donner (C-5/11)
UsedSoft GmbH v Oracle C-128/11[2013]
Art & Allposters (C-419/13) [2015]
goods v services?
• Art 56 TFEU (ex Art 49 EC)
• Services Directive 2006/123/EC
– n/a broadcasting etc - Art 2(2)(g)
– IP is included in ‘overriding reasons relating to the public
interest’
– “Neither does it follow that the non-provision of a service to a
consumer for lack of the required intellectual property rights in a
particular territory would constitute unlawful discrimination
– Article 16 ‘Freedom to provide services’ does not apply to
copyright or industrial property
• Football Association Premier League v QC Leisure;
Murphy v Media Protection Services C-403/08,C-429/08
• trading in‘used’software‘UsedSoft
Repackaging
• might be necessary – Member States
regulations for example
• Question – are rights exhausted?
• Hoffman-La Roche v Centrafarm
• Bristol-Myers Squibb v Paranova (repackaging, re-affixing mark)
• Pharmacia & Upjohn SA v Paranova A/S
C-379/97 [1999] (re-branding with mark
used in import state) iff
Repackaging, contd
•
•
•
•
•
Boehringer Ingelheim KG v Swingward Ltd
Boehringer Sohn v Paranova A/S
Hollister v MedikOstomy
Speciality v Doncaster and Madaus [2015]
Flynn Pharmaceutical v DrugsRUs [2015]
Doctrine of Common Origin
NB Terrapin v Terranova
• Sirena v Eda
• Hag I – Doctrine of Common origin
• Reassessment in Hag II
• IHT v Ideal Standard
• Doncaster Pharmaceuticals
• Budejovicky Budvar Narodni Podnik v
Rudolf Ammersin (C-478/07) [2009]
Plant variety rights
• Greenstar-Kanzi Europe NV v Hustin (C140/10) [2011]
(no consent if marketed in breach of licence)
Horizontal effect of free movement
rules?
• Fra.bo SpA v Deutsche Vereinigung des
Gas- und Wasserfaches eV (DVGW) Technisch-Wissenschaftlicher Verein (C171/11) [2013] CMLR 38
• certification bodies
International Exhaustion
EMI v CBS
Silhouette
Davidoff
Oracle
Sony v Nuplayer
Laserdisken ApS v Kulturministeriet
L'Oreal Norge AS v Per Aarskog AS (EFTA)
Border measures (imports from
3rd countries) & transit
• Mastercigars [2007]
Consignments in transit, physically present
in EU but destined for 3rd country & not
“released for circulation”, not regarded as
undermining right of first sale in the EU
• Class International v Colgate-Palmolive
• Philips/Nokia C-446/09 and C-495/09
• Border measures Reg (EU) No 608/2013
eff 1 Jan 2014
Complementary roles of
competition law and free movement
• Commission's 2012 report on competition
– “Private barriers to trade and competition
would risk replacing the public barriers to free
movement that have been painstakingly
dismantled. Subsidy races would risk wasting
precious budgetary resources, distorting
competition between companies established
in different Member States”
Commission press release IP/13/472, May
28, 2013, [2013] EU Focus 8