European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

The proprietor of the trade mark right may oppose further marketing of goods under his trade mark whilst he has already given his consent to their putting on the market within the EEA if he has legitimate reasons. Article 15(2) of Directive No 2015/2436 , which lays down that rule, sets forth, as example of legitimate reason, the fact that the condition of the goods is changed or impaired after th …

Exceptions

The proprietor of the trade mark right may oppose further marketing of goods under his trade mark whilst he has already given his consent to their putting on the market within the EEA if he has legitimate reasons. Article 15(2) of Directive No 2015/2436 , which lays down that rule, sets forth, as example of legitimate reason, the fact that the condition of the goods is changed or impaired after they have been put on the market.

According to case law which has now become classic, the proprietor of the trade mark may oppose its use by a third party after re-packaging of the product if that use is likely to impair the guarantee of origin. That right of opposition falls within the specific subject-matter of trade mark right. The guarantee of origin is impaired where the consumer or ultimate user cannot be certain that the product has not been subject at a previous stage of marketing to interference by a third person, without the authorization of the proprietor of the trade mark, which has affected the original condition of the product . The proprietor may therefore oppose the marketing of the product with new packaging on which the trade mark has been recalled, unless:

- the use of his trade-mark right, having regard to the marketing system which he has adopted, contributes to the artificial partitioning of the markets between Member States; the proprietor's opposition right can be limited where the repackaging is objectively necessary in order to market the product in the Member State of importation, and not solely based on the attempt to secure a commercial advantage; this may be the case of a national rule or practice which recommends packaging of a certain size, sickness insurance rules making reimbursements of medical expenses dependent on the size of packaging, or well-established medical prescription practices based, inter alia, on standard sizes recommended by professional groups and sickness insurance institutions ;

- the repackaging adversely affects the original condition of the product; in order to assess that the product is not adversely affected, account should be taken of both the product and the repackaging process; although repackaging which does not alter the inner packaging or which is carried out under the supervision of a public authority in order to ensure that the product remains intact, does not affect the original condition of the product , such is not the case where certain important information is omitted, either on the external or inner packaging of the repackaged product or in a new set of user instructions, where information is inaccurate concerning the nature, composition, effect, use or storage of the product , or where the importer inserts on the packaging an additional item intended for the taking and dosage of the product which does not comply with the using method and doses envisaged by the manufacturer ;

- it is stated on the new packaging who has repackaged the product; this must be printed in such a way as to be understood by a person with normal eyesight and exercising a normal degree of attentiveness; where an additional item has been added to the packaging, the importer must indicate the origin thereof; the trade mark proprietor may also require that the external packaging mentions the manufacturer of the product so that the user is not led to believe that the importer is the proprietor of the trade mark and the product has been manufactured under its supervision;

- he has received prior notice of the marketing of the repackaged product; the proprietor may require a sample of the repackaged product before it is put on sale; without any prior notice, the proprietor may obtain fixed compensation under the same conditions as if the goods had been spurious ; the necessary and sufficient information that the parallel importer must furnish, which depends on the facts of each case, may involve disclosing the Member State of export ;

- the presentation of the product affects its reputation or that of his trade mark; packaging that is defective, of poor quality or untidy is such as to affect the trade mark's reputation; the same goes in case of de-branding (non-affixing of the trade mark on the new exterior carton), co-branding (use of the same presentation for a number of different products), affixing by the parallel importer of his own logo or house-style, an additional label which wholly or partially obscures the proprietor's trade mark, or printing the name of the parallel importer in capital letters .

Adversely affecting the reputation of the trade mark also constitutes a legitimate ground independently of any alteration of the product. It allows the trade mark proprietor, inter alia, to oppose the use of his trade mark for advertising purposes given the nature of the products and the usual advertising methods in the relevant activity sector. For luxury and prestige goods, advertising is likely to adversely affect the mark's value if it undermines the allure, prestigious image and aura of luxury surrounding the goods . The use of the trade mark for advertising purposes imposes on the reseller to pay attention to the environment of the mark and to be careful to avoid putting the trade mark in a context which might seriously detract its image . A motor vehicle trade mark proprietor may also prohibit a reseller's advertising which gives rise to the impression that there is a commercial connection between them and that the reseller's undertaking is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings . On the other hand, the fact that an advertiser uses another person's trade mark with additional wording indicating that the relevant goods are being resold, such as “used” or “second-hand”, cannot induce to believe that the reseller and the trade mark proprietor are economically linked or that the ad is seriously detrimental to the reputation of that mark . However, resale must not, in the light of the volume, presentation or poor quality of the goods, be likely to seriously damage the image which the proprietor has succeeded in creating for his mark.

Formerly Article 7(2) of Directive No 2008/95.

Case 102/77 Hoffman-La Roche v Centrafarm [1978] ECR 1139, LawLex200400002972JBJ; see also Case 1/81 Pfizer v Eurim-Pharm [1981] ECR 2913, LawLex200500004093JBJ; C-71/94 Eurim-Pharm Arzneimittel v Beiersdorf and others [1996] ECR I-3603, LawLex200500005134JBJ; C-427/93 Bristol-Myers Squibb and others v Paranova [1996] ECR I-3457, LawLex200500005306JBJ.

Case C-337/95 Parfums Christian Dior v Evora [1997] ECR I-6013, LawLex200500005099JBJ.

Case C-63/97 BMW [1999] ECR I-905, LawLex200700001824JBJ.

Case C-558/08 Portakabin [2010] ECR I-6963, LawLex201100000281JBJ.

Case C-232/94 MPA Pharma v Rhône-Poulenc Pharma [1996] ECR I-3671, LawLex200500005122JBJ; See also Case C-143/00 Boehringer Ingelheim and others [2002] ECR I-3759, LawLex200900000546JBJ, regarding strong resistance from a significant proportion of consumers with respect to relabeled medicines which makes it objectively necessary to repackage medicines by replacement of packaging; C-443/99 Merck, Sharp & Dohme [2002] ECR I-3703, LawLex200900000857JBJ, which considers that replacement packaging of pharmaceutical products by the parallel importer is objectively necessary, and not based solely on an attempt to secure a commercial advantage, if, without such repackaging, effective access to the market concerned or to a substantial part of that market is hindered as the result of strong resistance from a significant proportion of consumers to relabelled pharmaceutical products; C-276/05 The Wellcome Foundation [2008] ECR I-10479, LawLex200900002296JBJ, which specifies that the condition of necessity according to which the repackaging of the pharmaceutical product, inter alia by reboxing it, is necessary for its further marketing in the importing Member State only concerns the repackaging of the product, and not the presentation of that new packaging.

Case C-71/94 Eurim-Pharm Arzneimittel v Beiersdorf and others [1996] ECR I-3603, LawLex200500005134JBJ.

Case C-71/94 Eurim-Pharm Arzneimittel v Beiersdorf and others [1996] ECR I-3603, LawLex200500005134JBJ; C-352/95 Phytheron International v Bourdon [1997] ECR I-1729, LawLex200900000450JBJ.

Case C-232/94 MPA Pharma v Rhône-Poulenc Pharma [1996] ECR I-3671, LawLex200500005122JBJ.

Case C-348/04 Boehringer Ingelheim and others [2007] ECR I-3391, LawLex200900000436JBJ.

Case C-276/05 The Wellcome Foundation [2008] ECR I-10479, LawLex200900002296JBJ.

Case C-348/04 Boehringer Ingelheim and others [2007] ECR I-3391, LawLex200900000436JBJ; See also for adverse effect to the reputation of the proprietor or his trade mark resulting from the presentation of the new packaging: C-276/05 The Wellcome Foundation [2008] ECR I-10479, LawLex200900002296JBJ, or relabeling: Case C-349/95 Loendersloot v Ballantine & Son and others [1997] ECR I-6227, LawLex200500005103JBJ; C-352/95 Phytheron International v Bourdon [1997] ECR I-1729, LawLex200900000450JBJ.

See, inter alia, Commission Decision No 92/428/EC of 24 July 1992, Parfums Givenchy system of selective distribution, LawLex200500004686JBJ, which specified, as part of the assessment of the lawfulness of a selective distribution network for luxury cosmetics, that "the ban on selling goods which, through their proximity, are liable to detract from the Givenchy brand image is intended merely to safeguard, in the public's mind, the aura of prestige and exclusivity inherent in the products in question, thus preventing any association with lower-quality goods".

European Business Law

251. Exceptions

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

251. Exceptions

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise