Intellectual Property Rights in EU Law Volume I: Free Movement and Competition Law

by Keeling, David T.

• ISBN13: 9780198259183
• ISBN10: 0198259182
• Edition: 1st
• Format: Hardcover
• Copyright: 2004-04-08
• Publisher: Oxford University Press

Summary

This volume provides an in-depth analysis of the relationship between intellectual property rights (including patents, trade marks, copyright, and designs) and the law of the European Union. It examines the conflict between intellectual property rights (exclusive rights limited normally to theterritory of a single Member State) and the principle of free movement of goods and services in the internal market. The various tests and theories propounded by the European Court of Justice in attempting to resolve that conflict are explained from a critical standpoint. The ramifications of theexhaustion-of-rights principle are explored and chapters of this volume are devoted to trade marks, patents, and copyright. Finally, the volume examines the limitations on the exercise of intellectual property rights as a result of EC competition law.Volume 2 will cover EU legislation which has harmonized intellectual property law and created unitary intellectual property rights such a the Community trade mark.

Author Biography

David T. Keeling is a Member of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs).

Table of Contents

Table of Cases	xv
Table of EC Legislation	xxv
Table of International and National Legislation	xxxix
Table of Abbreviations	xliii
Note on the renumbering of the EC Treaty articles	xliv
1. The scope of the undertaking	1	(4)
2. The free movement of goods and services: an overview of the basic principles	5	(17)
1. The goal of market integration	5	(3)
2. The EC Treaty provisions on the free movement of goods and services	8	(2)
2.1 Goods	8	(1)
2.2 Services	9	(1)
3. The scope of Article 28: from Dassonville to Keck and beyond	10	(6)
4. The scope of Article 49	16	(1)
5. Derogations from the principle of free movement	16	(6)
5.1 Goods	16	(3)
5.2 Services	19	(3)
3. The conflict between intellectual property rights and the principle of free movement	22	(8)
1. The essence of the problem	22	(2)
2. Radical solutions to the conflict: harmonization of national law and the creation of unitary intellectual property rights	24	(4)
3. The main principles established by the European Court of Justice	28	(2)
4. The applicability of national laws governing the creation of intellectual property rights, in the absence of harmonization	30	(21)
1. A questionable principle	30	(1)
2. Keurkoop v Nancy Kean Gifts: the Court gives carte blanche to national law as regards design rights	30	(3)
3. The concept of relative novelty	33	(3)
4. Industrie Diensten Groep v Beele: the Court requires justification for a national rule against 'slavish imitation'	36	(2)
5. Thetford v Fiamma: the Court enquires whether a rule of national patent law is justified	38	(4)
6. CICRA v Renault: the Court still refuses to scrutinize national design laws	42	(1)
7. Designations of origin: the Court requires justification	43	(2)
8. Warner Brothers and Metronome v Christiansen: the Court requires justification for a national rule on video rental rights	45	(1)
9. The principle of non-discrimination: the Phil Collins case	46	(5)
5. The dichotomy between the existence of the right and its exercise	51	(10)
1. The search for the appropriate test	51	(1)
2. The origin of the distinction between existence and exercise in competition law	51	(1)
3. The extension of the distinction to the free movement of goods	52	(2)
4. The dubious merits of the distinction	54	(2)
5. Article 295 as a guarantee of property rights	56	(1)
6. The outer limits of the principle that Community law does not affect the existence of intellectual property rights	57	(4)
6. The specific subject-matter of the right	61	(14)
7. The exhaustion of rights	75	(72)
1. The concept of exhaustion	75	(3)
2. Different types of exhaustion: national, international, and Community-wide	78	(2)
3. The early cases: Consten and Grundig and Deutsche Grammophon	80	(2)
4. Sales by related undertakings	82	(14)
4.1 The nature of the problem	82	(1)
4.2 Sales by members of the same economic group	83	(1)
4.3 Sales by an agent or distributor	84	(1)
4.4 Sales by licensees	84	(1)
4.5 Compulsory licences	84	(3)
4.6 Assignments	87	(2)
4.7 Sales made In breach of a contractual agreement with the right-holder	89	(4)
4.8 The distinction between direct sales and parallel imports	93	(3)
5. Is consent the only relevant factor?	96	(18)
5.1 Introduction	96	(1)
5.2 The Sterling Drug and Winthrop cases	96	(3)
5.3 The GEMA case	99	(3)
5.4 Merck v Stephar	102	(6)
5.5 Merck v Primecrown	108	(6)
6. Geographical scope of the exhaustion principle in EC law	114	(33)
6.1 The basic rule: Community-wide exhaustion	114	(1)
6.2 Exhaustion under the EEA Agreement	115	(4)
6.3 Exhaustion under free trade agreements	119	(10)
6.4 International exhaustion under EC law	129	(18)
8. Trade marks	147	(96)
1. The role of trade marks in a market economy	147	(12)
1.1 The origin function of trade marks	147	(2)
1.2 Ancillary functions of trade marks	149	(4)
1.3 The Court of Justice's understanding of the role of trade marks	153	(5)
1.4 The Community legislature's view of the functions of trade marks	158	(1)
2. Trade mark conflicts in the European Community	159	(35)
2.1 The nature of the problem	159	(2)
2.2 The rise and fall of the doctrine of common origin	161	(13)
2.3 The likelihood of confusion: who decides and by what criteria?	174	(20)
3. Repackaging and relabelling of trade-marked goods	194	(19)
3.1 The nature of the phenomenon	194	(1)
3.2 The early cases: Hoffmann-La Roche and Pfizer	195	(3)
3.3 Two types of repackaging: are they significantly different?	198	(2)
3.4 Reappraisal of the case law in Paranova	200	(4)
3.5 Further refinements of the Paranova principles	204	(1)
3.6 Loendersloot: the relabelling of whisky	205	(2)
3.7 The use of different trade marks for the same product	207	(6)
4. Advertising and the exhaustion of the trade mark owner's right	213	(6)
5. Unfair competition, consumer protection, and trade marks	219	(24)
5.1 Introduction	219	(2)
5.2 The Court's general approach to unfair competition and consumer protection	221	(1)
5.3 A potpourri of cases	222	(13)
5.4 Misleading trade marks	235	(8)
9. Patents	243	(20)
1. The justification for patent protection	243	(3)
1.1 General	243	(1)
1.2 The Court of Justice's understanding of the rationale of patents	244	(2)
2. Patents as an obstacle to the free movement of goods	246	(3)
3. Compulsory licences and licences of right	249	(10)
4. A fair deal for pharmaceutical patents?	259	(4)
10. Copyright	263	(34)
1. Copyright; droit d'auteur; neighbouring rights	263	(2)
2. The territoriality of copyright	265	(1)
3. The specific subject-matter and essential function of copyright	266	(5)
4. Reproduction right and performance right: the limitations of the exhaustion principle	271	(2)
5. Coditel I: performance right, broadcasting and the freedom to provide cross-frontier services	273	(4)
6. Council Directive 93/83/EEC	277	(1)
7. Performance right and the free movement of goods	278	(3)
8. Video rental and lending rights after harmonization	281	(3)
9. International agreements concerning copyright and related rights	284	(13)
9.1 The Berne Convention	284	(2)
9.2 The Universal Copyright Convention (UCC)	286	(1)
9.3 The International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the 1961 Rome Convention)	287	(2)
9.4 The 1971 Phonograms Convention	289	(1)
9.5 The 1974 Satellite Convention	290	(1)
9.6 The Agreement on Trade-related Aspects of Intellectual Property Rights, including trade in Counterfeit Goods (TRIPS)	290	(1)
9.7 The status and significance of the main international agreements In EC law	291	(6)
11. Competition law	297	(106)
1. Introduction	297	(1)
2. The Treaty prohibition on anti-competitive collusion between undertakings	297	(11)
2.1 The structure of Article 81	297	(1)
2.2 The implementation of the prohibition under Regulation No. 17	298	(4)
2.3 The reforms introduced by Regulation No. 1/2003	302	(4)
2.4 The substance of the prohibition	306	(2)
3. Anti-competitive agreements and intellectual property rights	308	(57)
3.1 Introduction	308	(1)
3.2 Assignments and licences in general	309	(2)
3.3 Trade mark assignments	311	(6)
3.4 Copyright assignments and licences	317	(7)
3.5 Patent and know-how licensing	324	(27)
3.6 Trade mark licensing	351	(7)
3.7 Trade mark delimitation agreements	358	(5)
3.8 Software licensing	363	(2)
4. The Treaty prohibition on abuse of market power	365	(38)
4.1 The essentials of Article 82	365	(1)
4.2 Establishing the existence of a dominant position	366	(10)
4.3 Can the exercise of an intellectual property right constitute an abuse of a dominant position?	376	(27)
Index	403