Keywords
Summary

Keywords

1 Approximation of laws - Trade marks - Directive 89/104 - Principle of exhaustion laid down in Article 7 - Application to products reimported after repackaging and reaffixing of the original trade mark - Application of Articles 30 and 36 of the Treaty (now, after amendment, Articles 28 EC and 30 EC) where the trade mark has been replaced with a different mark

(EC Treaty, Arts 30 and 36 (now, after amendment, Arts 28 EC and 30 EC); Council Directive 89/104, Art. 7)

2 Free movement of goods - Industrial and commercial property - Trade-mark rights - Product put on the market in a Member State by the trade mark proprietor or with his consent - Where the product is imported, after repackaging and reaffixing of the trade mark or after its replacement with a mark used by the proprietor in the importing Member State - Opposition by the trade mark proprietor - Permissible - Condition - No artificial partitioning of the markets between Member States - Condition to be applied in the same way in both cases

(EC Treaty, Art. 36 (now, after amendment, Art. 30 EC))

3 Free movement of goods - Industrial and commercial property - Trade-mark rights - Product put on the market in a Member State by the trade mark proprietor or with his consent - Where the product is imported after the trade mark has been replaced with the mark used by the proprietor in the importing Member State - Opposition by the trade mark proprietor - Permissible - Condition - No artificial partitioning of the markets between Member States - Criteria of assessment

(EC Treaty, Art. 36 (now, after amendment, Art. 30 EC)

Summary

1 Article 7 of First Directive 89/104 on trade marks - the first paragraph of which provides that exhaustion of the rights conferred by the trade mark arises only in relation to goods which have been put on the market in the Community `under that trade mark' by the proprietor or with his consent - is applicable where, after repackaging of the product, the original trade mark is reaffixed. In contrast, that article does not apply where a parallel importer replaces the original trade mark with a different one. In the latter case, the respective rights of the proprietor of the trade marks and of the parallel importer are determined by Articles 30 and 36 of the Treaty (now, after amendment, Articles 28 EC and 30 EC). Since Article 7 of the Directive, like Article 36 of the Treaty, is intended to reconcile the fundamental interest in protecting trade mark rights with the fundamental interest in the free movement of goods within the common market, those two provisions, which pursue the same result, must be interpreted in the same way.

2 The capacity of a trade-mark proprietor under national law to oppose the marketing of products by an importer, where they have been placed on the market in the Member State of export by him or with his consent - repackaged and the original trade mark reaffixed or replaced with the trade mark used by the proprietor of both in the importing Member State - is regarded as justified in the light of Article 36 of the Treaty (now, after amendment, Article 30 EC), unless it is established, in particular, that such opposition contributes to the artificial partitioning of the markets between Member States.

That condition cannot be applied differently depending on whether the original trade mark is reaffixed after repackaging or replaced, unless separate rules are justified by objective differences between the two situations. In so far as the trade-mark rights in the importing Member State allow the proprietor of the mark to prevent it being reaffixed after repackaging of the product or being replaced, and where the repackaging with reaffixing or replacement of the trade mark is necessary to enable the products to be marketed by the parallel importer in the importing Member State, there are obstacles to intracommunity trade giving rise to artificial partitioning of the markets between Member States, whether or not the proprietor intended such partitioning.

3 The condition relating to the artificial partitioning of the markets between Member States means that it is necessary - in order to determine whether the proprietor of a trade mark may, under national law, prevent a parallel importer of pharmaceutical products from replacing the trade mark used in the Member State of export with that which the proprietor uses in the Member State of import - to assess whether the circumstances prevailing at the time of marketing in the Member State of import make it objectively necessary to replace the original trade mark with that used in the Member State of import in order that the product in question may be marketed in that State by the parallel importer. This condition of necessity is satisfied if, in a specific case, the prohibition imposed on the importer against replacing the trade mark hinders effective access to the markets of the importing Member State. In contrast, that condition will not be satisfied if replacement of the trade mark can be explained solely as an attempt by the parallel importer to secure a commercial advantage.