Judgment of the Court (Fourth Chamber) of 3 June 2010 (reference for a preliminary ruling from the Oberlandesgericht Nürnberg (Germany)) — Coty Prestige Lancaster Group GmbH v Simex Trading AG

(Case C-127/09) (1)

(Trade-mark law - Regulation (EC) No 40/94 - Article 13(1) - Directive 89/104/EEC - Article 7(1) - Exhaustion of the trade mark proprietor’s rights - Concept of ‘goods put on the market’ - Consent of the proprietor - Bottles of perfume known as ‘testers’, made available by the trade mark proprietor to an authorised specialist dealer belonging to a selective distribution network)

2010/C 209/11

Language of the case: German

Referring court

Oberlandesgericht Nürnberg

Parties to the main proceedings

Applicant: Coty Prestige Lancaster Group GmbH

Defendant: Simex Trading AG

Re:

Reference for a preliminary ruling — Oberlandesgericht Nürnberg — Interpretation of Article 13(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) and Article 7 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Exhaustion of the right conferred by the trade mark — Interpretation of the expression ‘product put on the market’ — Perfume testers the packaging of which bears the information that the product is intended for advertising purposes and not for sale, which are made available to contracted distributors on an interim basis and without a transfer of ownership

Operative part of the judgment

In circumstances such as those of the main proceedings, Article 13(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark and Article 7(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, are to be interpreted as meaning that the rights conferred by the trade mark are exhausted only if, according to an assessment which it is for the national court to make, it may be concluded that the proprietor of the mark expressly or impliedly consented to a putting on the market, either in the European Community or in the European Economic Area, of the goods in respect of which that exhaustion is claimed to exist.

In circumstances such as those of the main proceedings, where ‘perfume testers’ are made available, without transfer of ownership and with a prohibition on sale, to intermediaries who are contractually bound to the trade mark proprietor for the purpose of allowing their customers to test the contents, where the trade mark proprietor may at any time recall those goods and where the presentation of the goods is clearly distinguishable from that of the bottles of perfume normally made available to the intermediaries by the trade mark proprietor, the fact that those testers are bottles of perfume which bear not only the word ‘Demonstration’ but also the statement ‘Not for Sale’ precludes, in the absence of any evidence to the contrary, which it is for the national court to assess, a finding that the trade mark proprietor impliedly consented to putting them on the market.

(1)  OJ C 141, 20.6.2009.