ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where that importer has repackaged the product and reaffixed the trade mark without the owner’ s authorization, is to be assessed on the basis of the combined provisions of national trade mark law and Article 7 of the directive, interpreted in the light of Article 36 of the Treaty. Article 7 of the directive comprehensively regulates the question of the exhaustion of trade mark rights for products traded in the Community, so that national rules on the subject must be assessed in the light of that article. However, whilst it is true that, where Community directives provide for the harmonization of measures necessary to ensure the protection of the interests referred to in Article 36 of the Treaty, any national measure relating thereto must be assessed in relation to the provisions of that directive and not Articles 30 to 36 of the Treaty, the directive in question must, like any secondary legislation, be interpreted in the light of the Treaty rules on the free movement of goods. 2. Article 7(1) of the First Directive 89/104 on trade marks, which is framed in terms corresponding to those used by the Court in its case-law which, in interpreting Articles 30 and 36 of the Treaty, has recognized in Community law the principle of the exhaustion of the rights conferred by a trade mark, precludes a trade mark owner, save in the circumstances defined in Article 7(2), from relying on his rights as owner to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent, even if that importer has repackaged the product and reaffixed the trade mark without the owner’ s authorization. That case-law shows that the owner’ s exclusive right to affix a trade mark to a product must in certain circumstances be regarded as exhausted in order to allow an importer to market under that trade mark products which were put on the market in another Member State by the owner or with his consent; the non-application, outside the exceptions defined in Article 7(2), of the principle of exhaustion established in Article 7(1), where the importer has repackaged the product and reaffixed the trade mark, would imply a major alteration to the principles flowing from Articles 30 and 36 of the Treaty as interpreted by the Court. There is nothing to suggest that Article 7 of the directive is intended to restrict the scope of that case-law, nor would such an effect be permissible, since a directive cannot justify obstacles to intra-Community trade save within the bounds set by the Treaty rules.
3. Article 7 of the First Directive 89/104 on trade marks, 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, so that those two provisions, which pursue the same result, must be interpreted in the same way. Therefore, and in accordance with the Court’ s case-law under Article 36, Article 7(2) of Directive 89/104, which lays down exceptions to the exhaustion principle, must be interpreted as meaning that the trade mark owner may legitimately oppose the further marketing of a pharmaceutical product which has been put on the market in another Member State by the owner or with his consent, where the importer has repackaged the product and reaffixed the trade mark thereto without the owner’ s authorization, unless the following conditions are satisfied:
- it is established that reliance on trade mark rights by the owner in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States; such is the case, in particular, where the owner has put an identical pharmaceutical product on the market in several Member States in various forms of packaging, and the repackaging carried out by the importer is necessary in order to market the product in the Member State of importation, and also carried out in such conditions that the original condition of the product cannot be affected by it; that condition does not, however, imply that it must be established that the trade mark owner deliberately sought to partition the markets between Member States;
- it is shown that the repackaging cannot affect the original condition of the product inside the packaging; such is the case, in particular, where the importer has merely carried out operations involving no risk of the product being affected, such as, for example, the removal of blister packs, flasks, phials, ampoules or inhalers from their original external packaging and their replacement in new external packaging, the fixing of self-stick labels on the inner packaging of the product, the addition to the packaging of new user instructions or information, or the insertion of an extra article; it is for the national court to verify that the original condition of the product inside the packaging is not indirectly affected, for example, by the fact that the external or inner packaging of the repackaged product or new user instructions or information omits certain important information or gives inaccurate information, or the fact that an extra article inserted in the packaging by the importer and designed for the ingestion and dosage of the product does not comply with the method of use and the doses envisaged by the manufacturer;
- the new packaging clearly states who repackaged the product and the name of the manufacturer in print such that a person with normal eyesight, exercising a normal degree of attentiveness, would be in a position to understand; similarly, the origin of an extra article from a source other than the trade mark owner must be indicated in such a way as to dispel any impression that the trade mark owner is responsible for it; however, it is not necessary to indicate that the repackaging was carried out without the authorization of the trade mark owner;
- the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its owner; thus, the packaging must not be defective, of poor quality, or untidy; and
- the importer gives notice to the trade mark owner before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.
Rodriguez Iglesias, P
C-427/93, C-429/93, C-436/93,  EUECJ C-427/93,  ECR I-3457,  Ch 75,  FSR 102,  3 WLR 1746,  ETMR 1,  1 CMLR 1151, (1997) 34 BMLR 59,  CEC 716
Cited – Consorzio Del Prosciutto Di Parma v Asda Stores Limited and others HL 8-Feb-2001
The name ‘Parma Ham’ was controlled as to its use under Italian law, and the associated mark, the ‘corona ducale’, was to be applied to a sale of Parma Ham, including any packaging. Proper Parma Ham was imported and resold through the defendant’s . .
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Cited – Oracle America Inc v M-Tech Data Ltd and Another CA 24-Aug-2010
The claimant sought to prevent import from China of its own second hand computer disc drives said to infringe its trade marks. It had granted an exclusive licence for the sale of its equipment in Europe and alleged that this was a parallel import. . .
Cited – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.
Updated: 18 October 2021; Ref: scu.161211