Of Split Trade Marks and Common Markets
| Author | Peter Oliver |
| Published date | 01 July 1991 |
| Date | 01 July 1991 |
| DOI | http://doi.org/10.1111/j.1468-2230.1991.tb00911.x |
July
19911
Of
Split
Trade
Marks
atid
Comtnon
Markets
four concepts at work in that decision:
(a) contract;
(b) equitable doctrine of mutual wills;
(c) restitution;
(d) equitable estoppel.
Concept
(b)
was inapplicable, since this was not an action
against
a
survivor.
Concept
(a) was applicable, in that a survivor of a mutual wills agreement is able to sue
the personal representatives of
the
first to die for a failure by the deceased
to
comply
with that agreement. Concept (c) can in some circumstances provide a remedy for
the survivor if the first to die has failed
to
comply with the agreement, provided
the latter has been unjustly enriched at the former’s expense. It was
prima
facie
applicable in
Bigg,
although a more rigorous analysis would
need
to be made. Concept
(d) can also in some circumstances provide a remedy for the survivor if its require-
ments are met. It was
prima facie
applicable in
Bigg,
although here also a more
rigorous analysis should have been provided. It is hoped that when McPherson
J’s
interesting decision is cited by both text writers and practitioners care will be taken
not to miss some of the subtleties apparent both
in
its negative and positive aspects.
Of
Split
Trade Marks and
Common
Markets
Peter Oliver*
The ruling of the European Court of Justice
in
Vun Zuylen Fr2res
v
Hug’
(‘Hug
Z‘)
has always aroused heated controversy and its reversal in
CNL-Sucul
v
Hug2
(‘Hag
II’)
is
to
be warmly welcomed.
One
notable feature
of
this case
is
that
it
is
thought to be the first in which
the
Court has expressly reversed an earlier
j~dgment.~ Both cases related to Article
30
of the Treaty of Rome, which prohibits
quantitative restrictions on imports between Member States and measures
of
equivalent effect; and to Article
36
which lays down an exception
to
this rule
inter
uliu
for measures justified for the protection
of
industrial and commercial property
(hereafter ‘industrial property.
’)
In
Hug
I
the Court enunciated the doctrine of common origin, whereby a trade
mark may not be relied on with a view to prohibiting the marketing in one Member
State of the European Community of goods lawfully produced
in
another Member
State under an identical trade mark having the same origin. This is to be distinguished
from the principle of exhaustion
of
rights according
to
which, subject to certain
exceptions, the exclusive right guaranteed by national legislation on industrial property
is exhausted when a product has been lawfully distributed in one Member State
*
Member
of
the Legal Service, Conimission
of
the European Communities. The views expresscd here
are personal
to
the author.
Case 192173 [1974] ECR 731.
Case C-10189 I19901 3 CMLR 571, noted by Rothnie [I9911
1
Eitruaeuri krellecruul Pruperry
..
.~
..
Review
24.
However, some other rulings have been tacitly reversed. Thus in case C-70/88
Purliunteiir
v
Council
(judgment
of
22 May 1990) (Parliament may
in
certain circumstances bring an action
for
annulment
under Article 173 EEC) the Court reversed its very recent judgment
in
case 302187
ParIiunren!
v
Council
11988) ECR 5615.
5
87
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