Case C‑291/16

Schweppes SA

v

Red Paralela SL and Red Paralela BCN SL

(Request for a preliminary ruling from the Juzgado de lo Mercantil no 8 de Barcelona)

(Reference for a preliminary ruling — Approximation of laws — Trade marks — Directive 2008/95/EC — Article 7(1) — Exhaustion of the rights conferred by a trade mark — Parallel trade marks — Assignment of trade marks in respect of part of the European Economic Area (EEA) — Commercial strategy deliberately promoting the image of a single global trade mark following that assignment — Independent proprietors nonetheless maintaining close commercial and economic relations)

Summary — Judgment of the Court (Second Chamber), 20 December 2017

1. Questions referred for a preliminary ruling—Jurisdiction of the Court—Limits—Jurisdiction of the national court—Establishing and assessing the facts of the dispute—Necessity of a question referred and relevance of the questions raised—Assessment by the national court

   (Art. 267 TFEU)

2. Questions referred for a preliminary ruling—Jurisdiction of the Court—Limits—Clearly irrelevant questions and hypothetical questions put in a context not permitting a useful answer—Questions bearing no relation to the subject matter of the case in the main proceedings—Lack of jurisdiction of the Court

   (Art. 267 TFEU)

3. Approximation of laws—Trade marks—Directive 2008/95—Exhaustion of the rights conferred by a trade mark—Assignment of a trade mark to a third party limited to part of the European Economic Area—Opposition by the proprietor of the mark in one Member State to the import of identical goods bearing the same mark originating in another Member State—Not permissible—Conditions

   (Art. 36 TFEU; Council Directive 2008/95, Art. 7(1))

1.  See the text of the decision.

   (see paras 21, 23)

2.  See the text of the decision.

   (see para. 24)

3.  Article 7(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, read in the light of Article 36 TFEU, must be interpreted as precluding the proprietor of a national trade mark from opposing the import of identical goods bearing the same mark originating in another Member State in which that mark, which initially belonged to that proprietor, is now owned by a third party which has acquired the rights thereto by assignment, when, following that assignment,

   –

   the proprietor, either acting alone or maintaining its coordinated trade mark strategy with that third party, has actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark,

   or

   –

   there exist economic links between the proprietor and that third party, inasmuch as they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of the trade mark, so that it is possible for them to determine, directly or indirectly, the goods to which the trade mark is affixed and to control the quality of those goods.

   By that conduct, which results in the proprietor’s trade mark no longer independently fulfilling its essential function within its own territorial field of application, the proprietor has himself compromised or distorted that function. Consequently, he may not rely on the necessity of protecting that function in order to oppose the import of identical goods bearing the same mark originating in another Member State where that mark is now owned by that third party.

   (see paras 40, 55, operative part)