Opinion of the Advocate General — ECLI:EU:C:2006:235
Date: 2006-04-06
Language of the case: English
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: United Kingdom

summary is wholly correct. What the Court actually said in Hoffmann-La Roche was that the guarantee of origin enables the consumer to be certain that a trade-marked product has not been subject to unauthorised interference by a third party ‘such as to affect [its] original condition’. (49) That suggests that the precise manner and style of reboxing which affects only the outer packaging would not impair the guarantee of origin. 47. Moreover as I have already indicated (50) I do not consider that the notion of the ‘condition of the goods [being] changed or impaired’ (the wording of Article 7(2) of the Trade Marks Directive, which reflects the Hoffmann-La Roche conditions) should be broadly interpreted. 48. The travaux préparatoires (51) also suggest that the Commission originally intended the necessity requirement to apply to the fact of repackaging; and envisaged that the parallel importer should enjoy a degree of freedom as to how precisely he repackaged, provided that he met the requirements laid down in Hoffman-La Roche. (52) There is nothing to suggest that that intention did not survive the legislative process. 49. The referring court and the defendants contend that the decision of the EFTA Court in Paranova v Merck (53) endorses the view that the necessity condition applies merely to the fact of reboxing and not to the precise manner and style thereof. I am not convinced that that judgment is quite as clear-cut as is suggested. It is however certainly relevant. 50. In that case, the EFTA Court was asked inter alia whether the criterion of necessity that the Court of Justice had applied in interpreting ‘legitimate reasons’ within the meaning of Article 7(2) applied also to the more specific design of the packaging or whether the more specific design of the packaging was to be assessed solely on the basis of the condition that the repackaging must not adversely affect the reputation of the trade mark proprietor or the trade mark. 51. The EFTA Court reviewed the case-law of the Court of Justice and in particular the BMS conditions. It considered that on the basis of the first condition ‘it will be established whether the parallel importer has a right to repackage the product and reaffix the manufacturer’s trade mark, whereas the other criteria determine conditions for the exercise of this right in order to safeguard legitimate interests of the trade mark proprietor’. Citing Bristol-Myers Squibb, Merck Sharpe & Dohme, (54)Boehringer I and Pharmacia & Upjohn, (55) the EFTA Court stated that ‘[p]ermitting parallel imports and repackaging are means which aim at securing the free movement of goods. … The parallel importer’s right to repackage is, in other words, justified because it makes an important contribution to overcoming the partitioning of the EEA market along national boundaries. It is against this background that the Court of Justice [has] established the necessity test … It follows that the [test] is relevant to the issue of establishing the parallel importer’s right to repackage as such, where the conduct of the trade mark proprietor and factual or legal trade barriers hinder effective access to the market of the State of importation. Where … the right to repackage is beyond doubt and the parallel importer has, in exercising it, achieved effective access to the market, the necessity requirement cannot be decisive when interpreting the term “legitimate reasons” in Article 7(2) of the Directive. … Imposing the necessity requirement on the market conduct of the parallel importer after having gained market access, in particular on its strategy of product presentation, such as advertising or packaging design, would constitute a disproportionate restriction on the free movement of goods’. (56) 52. That reasoning seems to me to be correct. The scheme of the BMS conditions (and indeed of the original conditions laid down in Hoffmann-La Roche) also lends itself to that analysis. It is furthermore borne out by the approach of the Court in Pharmacia & Upjohn, (57) in which it is stated that the ‘condition of necessity is satisfied if … the rules or practices in the importing Member State prevent the product in question from being marketed in that State’. 53. It has been suggested (58) that the judgment of the EFTA Court gives insufficient weight to ‘the right of a trade mark proprietor to present his trade mark as he wished’ and on that basis is not good law. A trade mark proprietor of course has such a right. But it is exhausted once the products have been put on the market in the Community by him or with his consent. That is the point of the rule of exhaustion, which seeks to ensure that intellectual property rights are not used to impede the free movement of goods. In my view there must be very cogent reasons for displacing it. 54. There is moreover a forceful pragmatic argument (which in my view is at least as important as the conceptual coherence of the law) against the view that the necessity test applies to the precise manner and style of repackaging. Such an interpretation would place an intolerable burden on national courts, which would have to take numerous decisions on trivial details of pattern and colour which are not obviously within their judicial remit. 55. I accordingly conclude that the requirement that repackaging be necessary applies merely to the fact of reboxing and does not extend to the precise manner and style thereof. Is the fourth BMS condition infringed only if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark? 56. The fourth BMS condition is that ‘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’. 57. This question (59) was prompted by the defendants’ submission that the fourth BMS condition was limited to poor packaging. The referring court disagrees, considering that any damage to the reputation of the mark means non-compliance with the condition, but presumably felt that the issue was not beyond doubt. 58. I agree with the claimants and the Commission that there is no reason to limit the fourth BMS condition to matters of defective, poor quality or untidy packaging. It is clear from paragraphs 75 to 77 of the judgment in BMS that the Court referred to such packaging as examples of ‘inappropriate presentation’ in the case of pharmaceutical products that might damage the reputation of the trade mark. 59. The Court has moreover since BMS recognised other examples of damage to reputation which could in principle constitute a ‘legitimate reason’ within the meaning of Article 7(2) allowing the proprietor to oppose further commercialisation of goods which have been put on the market in the Community by him or with his consent. (60) Thus in Dior (61) the Court stated generally that damage to the reputation of a trade mark may be a legitimate reason; and indicated more specifically that use of a trade mark in advertising which seriously damaged the reputation of the mark could be a legitimate reason. In BMW (62) the Court stated that the fact that a trade mark is used in a reseller’s advertising in such a way that it may give rise to the impression that there is a commercial connection between the reseller and the trade mark proprietor may constitute a legitimate reason. 60. The defendants do not in my view convincingly deal with this case-law. They rely on the inclusion of the word ‘thus’ (63) in the fourth BMS condition as suggesting that it is only where the packaging is defective, of poor quality or untidy that the fourth condition is infringed. The word ‘thus’ is a perilously fragile thread on which to hang that interpretation. In any event it could equally mean ‘by way of example’ and hence support the opposite view. 61. I accordingly conclude that the fourth BMS condition is not limited to defective, poor quality or untidy packaging: the issue is whether there is a serious risk that the reputation of the trade mark will be damaged. Are certain (specified) methods of repackaging necessarily damaging to the reputation of a trade mark or is damage to reputation a question of fact? 62. By this question (64) the national court asks whether it is necessarily damaging to the reputation of a trade mark if (i) the trade mark is not affixed to the new exterior carton (‘debranding’) or (ii) the parallel importer applies either his own logo or a house-style or get-up or a get-up used for a number of different products to the new exterior carton (‘cobranding’), or whether damage to reputation is a question of fact. 63. As explained above, the High Court took the view in its second judgment that any repackaging must be assumed to be damaging to the reputation of the mark. The referring court disagrees. It states that in some cases cobranding may cause such damage, for example if it creates a perception that the cobrand’s proprietor is the manufacturer or that the importer and manufacturer are in some sort of joint venture. That is not the case however in the present proceedings. As regards debranding the referring court also sees no damage to reputation: a trade mark owner has no right that requires subsequent dealers to keep his trade mark on the product. 64. The claimants submit that debranding and cobranding are both inherently damaging to the reputation of the trade mark. The defendants submit that debranding is not an infringement at all since it does not amount to ‘using’ the trade mark within the meaning of Article 5(1). With regard to cobranding, there was no suggestion in BMS that the parallel importer’s adoption of a house style for its packaging would be damaging to the trade mark’s reputation. (65) The Commission submits that, while each of the circumstances posited may in principle damage the reputation of a trade mark, in each case the national court must carry out a detailed factual appraisal in order to determine whether it actually does so. 65. I agree with the position adopted by the Commission. It is clear (see points 58 and 59 above) that both inappropriate presentation of the mark and incorrect suggestion of commercial link with the trade mark owner are capable in principle of damaging the mark’s reputation (although it is also clear from Dior that only serious damage to reputation will amount to a legitimate reason within the meaning of Article 7(2) (66)). The Court confirmed in BMW that whether advertising may create the impression that there is a commercial connection between the reseller and the trade mark proprietor is a question of fact for the national court to decide in the light of the circumstances of each case. (67) It seems to me that the same logic should apply in other circumstances which might amount to ‘legitimate reasons’ within the meaning of Article 7(2). Whether a given circumstance (e.g. damage to reputation) may in principle constitute a ‘legitimate reason’ is a question of law, but whether in a given case that circumstance obtains is a question of fact. 66. I accordingly conclude that both inappropriate presentation of the trade mark and incorrect suggestion of a commercial link are capable in principle of damaging the trade mark’s reputation. Whether particular forms of repackaging cause such damage and whether the damage is sufficiently serious to amount to a ‘legitimate reason’ within the meaning of Article 7(2) of the Directive is a question of fact for the national court. What is the effect of failing to give notice as required by the fifth BMS condition? 67. The fifth BMS condition requires the importer to give notice to the trade mark owner before the repackaged product is put on sale and, on demand, to supply him with a specimen thereof. 68. In Boehringer I the Court ruled that if the parallel importer does not himself satisfy the requirement of prior notice, the trade mark proprietor may oppose the marketing of the repackaged product and that, in the event of dispute, it is for the national court to assess, in the light of all the relevant circumstances, whether the proprietor had a reasonable time to react to the intended repackaging. The Court suggested on a ‘purely indicative’ basis that 15 working days would be a reasonable period. (68) 69. The High Court in its second judgment considered that it was not clear from Boehringer I what the appropriate remedy would be where the importer has failed to give notice but has complied with the other BMS conditions. The referring court accordingly asks, (69) on the assumption that that is the case, (a) whether the importer infringes by every subsequent importation or only until the proprietor has become aware of the product and the notice period has expired; (b) whether the proprietor is entitled to claim damages or an account on the same basis as if the goods had been spurious; (c) whether the granting of such remedies is subject to the principle of proportionality and (d) if not, upon what basis compensation should be assessed. 70. The claimants submit that every act subsequent to a failure to give notice is an infringement regardless of the proprietor’s awareness since each act misleads consumers as to the origin of the product. Remedies are to be determined by national law. The defendants submit that the proprietor is entitled to relief only until the expiry of 15 days after he has actually become aware of the packaging in question, by whatever means. The principle of proportionality applies to remedies as well as to substantive measures. The Commission agrees with the claimants that question 3(a) has already been answered in the sense of the first alternative put by the national court: see Boehringer I. Compensation is to be determined in accordance with national principles relating to financial remedies provided that these are compatible with Community and international law, in particular that they comply with the principles of equivalence, effectiveness and proportionality. 71. The referring court correctly points out that the requirement for notice does not appear to have any Treaty basis. It was introduced in the judgment in Hoffmann-La Roche on the footing that it reduced the risk of consumers being misled as to the origin of the product. (70) That rationale was further developed in Bristol-Myers Squibb, where the Court explained that the requirement for notice together with the possibility (introduced in that judgment) for the trade mark proprietor to require a sample of the repackaged product is to enable the proprietor to check that the repackaging does not affect the original condition of the product and that the presentation is not likely to damage the reputation of the mark. It also affords the proprietor a better possibility of protecting himself against counterfeiting. (71) 72. The requirement is therefore, in contrast to the first four BMS conditions which may be described as substantive, in the nature of a procedural requirement. It accordingly follows, in my view, that breach of the notice requirement attracts a sanction distinct from the sanctions applicable if the other, substantive, BMS conditions are breached. 73. That is not to minimise the importance of the notice requirement. It may be essentially procedural, but it is none the less an important safeguard for the trade mark proprietor. Failure to give notice is not trivial. 74. It may also be worth pointing out that, save in very rare cases, failure to give notice will be deliberate. The parallel importer knows who the trade mark owner is and how to contact him. As noted in the Opinion of Advocate General Jacobs in Boehringer I, the notice requirement ‘is simple to apply and simple to observe, thus contributing to the uniform application of Community law’. (72) 75. Two scenarios may be envisaged: no (or inadequate) notice but compliance with the first four BMS conditions and no (or inadequate) notice but non-compliance with one or more of the first four BMS conditions. 76. In the first of those scenarios, which forms the basis of the referring court’s question, it seems to me that it would be disproportionate to sanction the parallel importer for failure to give notice as severely as if, in addition to failing to give notice, he had breached one or more of the substantive conditions. A sanction is none the less appropriate because, as explained above, giving notice is an important procedural requirement; and by failing to give notice the parallel importer has (deliberately) deprived the trade mark owner of the opportunity to effect the prior control that Community law allows him. The sanction should thus be effective and dissuasive. It should not however be equal to the sanction that would apply if the substantive conditions had also been breached, because that would be disproportionate. 77. The defendants express concern that the trade mark owner may, after becoming aware from another source of a repackaged product, deliberately delay commencing proceedings with a view to increasing any financial award for infringement. It would in my view similarly be disproportionate and indeed unjust for the trade mark owner to benefit in such a manner from his own delay. 78. Likewise, because the parallel importer is (in fact) exercising Community law rights, the sanction must not discriminate against him because he is exercising Community rights rather than national law rights; and must not make it in practice impossible for him to exercise those rights. 79. In any given case, it is for the national judge to set an appropriate sanction which respects those parameters. 80. The second scenario described above is, of course, hypothetical in the present case. Nevertheless, I mention it for the sake of completeness. Here, the situation is significantly different. The failure to give notice will in such cases be an aggravating factor, because it makes it more difficult for the trade mark owner legitimately to object to the use of repackaging (whether generally on the basis that it is not necessary to repackage at all, or specifically on the basis that the actual repackaging used falls short of the second, third and/or fourth BMS condition). If, as is probable, the failure to give notice is deliberate, the purpose will presumably be to enable the parallel importer to get a foothold in the market before the trade mark owner is in a position to enforce his rights. In such circumstances, I consider that the national court should apply its normal sanctions under national law for breach of the substantive conditions, and should impose a separate and additional sanction for the failure to give notice. Who bears the burden of proof? 81. The referring court asks (73) whether the importer bears the burden of proving that the new packaging complies with each BMS condition, or whether the burden of proof varies from condition to condition, and if so, how. In the context of the fourth BMS condition (damage to reputation), the referring court also asks (74) who bears the burden of proving that a particular form of box design damages the reputation of the trade mark if (as I suggest is the case) the question whether such design is so damaging is a question of fact. 82. Clearly the impact of the five BMS conditions, and whether in practice they operate in a way that respects the proper relationship between Article 7(1) and Article 7(2) of the Directive, will depend significantly upon which party bears the burden of showing that those conditions are satisfied. The guidance given in Boehringer I, namely that the burden of proof should be a procedural matter determined by the national court as long as the effect is non-discriminatory, has proved insufficiently precise, as the present reference demonstrates. Depending upon which party is required by the national court to discharge the burden of proof in a particular Member State, the same factual circumstances may lead to different outcomes in different Member States, a result that would be contrary to the harmonisation that the Directive seeks to achieve. (75) 83. In deciding on the respective roles played here by Community law and national law, it is important to distinguish between determining where the burden of proof should fall, and determining how that burden of proof is to be discharged. I agree with the referring court that it is appropriate for this Court to indicate to national courts where the burden of proof lies in respect of the five BMS conditions. How that burden is discharged in respect of any individual conditions will then be a matter for national procedural and evidential rules. 84. The claimants submit that the burden of proof for all five conditions should lie on the defendants, because of the inherent exposure to harm of the trade mark owner’s rights through repackaging. 85. The defendants advance two submissions. Primarily, they suggest that the burden of proof for all five conditions should lie with the trade mark owner. Such an interpretation cannot be squared with the way in which the Court’s judgment in Bristol-Myers Squibb is framed, (76) and I do not consider it further. 86. Alternatively, they suggest that the burden of proof for each condition should be assigned according to which party substantially asserts the affirmative of the issue in question (in order to avoid the risk of being required to prove a negative). They would therefore accept that the burden of proof with regard to the first condition (necessity to repackage in order to market the product), the third condition (clear identification of manufacturer and importer) and the fifth condition (notice) should fall upon the parallel importer. They contend, however, that the trade mark owner should be required to make good any claim that the repackaging does not satisfy the second condition (no effect on original condition, proper instructions) or the fourth condition (non-damaging presentation). 87. The Commission submits that, as a starting point, it is up to national procedural rules to determine who bears the burden of proving compliance with the BMS conditions. However, national procedural rules which impose the burden of proof on the parallel importer may be qualified if the importer is able to establish that their operation leads to a real risk of partitioning national markets. (77) In such a case, the burden of proving each of the BMS conditions lies on the party who is the more likely to possess the information relevant to assessing that condition. 88. Once one examines the five BMS conditions, it becomes apparent that they are not homogeneous. The first condition is potentially complex. Depending on the circumstances, detailed analysis of the legal and factual circumstances of the market in the Member State of importation may sometimes be required in order to decide whether repackaging is necessary in order to permit the parallel importer to access and to sell effectively in that market. Superficially, the second and fourth conditions appear complex. To my mind, however, each requires evaluation of what is essentially a relatively simple issue: does what has been done to the product by way of repackaging carry with it a real risk that the original condition of the product will be adversely affected (second condition); and is the new presentation of the product such that there is a real risk of serious damage to the reputation of the trade mark (fourth condition). The third and fifth conditions are rather more straightforward. 89. Depending upon which of the conditions is at issue, it may be more or less practicable for the parallel importer or the trade mark owner to marshal the necessary material to prove that a particular condition is (or is not) satisfied, and hence reasonable to require him to do so in order to discharge the burden of proof. 90. More fundamentally, the effect of requiring the parallel importer to discharge all five conditions would be to tilt the balance further away from free movement of goods (the fundamental principle) and towards protection of intellectual property rights (the exception to that principle). Conversely, requiring the trade mark owner to discharge all five conditions would make it correspondingly more difficult for him ever to invoke his rights under Article 7(2) of the Directive and (as I have already indicated) runs counter to Bristol-Myers Squibb. 91. To my mind, both those options are therefore unacceptable; and one should consider each condition in turn. The first condition: necessity 92. The Court indicated in Bristol-Myers Squibb that the ‘power of the owner of trade mark rights protected in a Member State to oppose the marketing of repackaged products under the trade mark should be limited only in so far as the repackaging undertaken by the importer is necessary in order to market the product in the Member State of importation’. (78) It seems to me to be implicit in the logic of that statement that the parallel importer must demonstrate necessity in order to displace the presumption that the trade mark owner retains the power to oppose the marketing of repackaged products. It hardly makes sense for the person possessing power to be required to demonstrate that he may not, in the circumstances, exercise it. 93. It also seems to me that the parallel importer is the party most likely to possess the information to discharge the burden of proving necessity. In the normal course of events, he will have familiarised himself with the regulatory requirements governing the distribution and marketing of pharmaceutical products in the Member State of importation. He will be aware of such matters as what is required, in what language, on a patient information leaflet and the sizes of product packaging that are (or are not) routinely prescribed and/or routinely reimbursed by the social security system. He also has the commercial incentive to do the necessary work to discover whether (for example) there is patient resistance in a particular Member State to packs with overstickering, (79) so that it is necessary to rebox rather than to oversticker in order to market the product successfully. 94. I therefore consider that the parallel importer should bear the burden of proving necessity. The second condition: no adverse effect on condition of product 95. It is the parallel importer who chooses the extent to which he repackages the product and by what method, and who has supervision of (and hence control over) the repackaging process. He knows that the trade mark owner may legitimately ‘oppose any repackaging involving a risk of the product inside the packaging being exposed to tampering or to influences affecting its original condition’ (80) and that the repackaging must therefore be carried out ‘in circumstances not capable of affecting the original condition of the product’. (81) It is thus for the parallel importer to show that what he has chosen to do, and how he has chosen to do it, will maintain the integrity of the trade-marked product. This does not seem to me to be tantamount to proving a negative, as the defendants submit. Moreover, in the context of pharmaceutical products, the parallel importer will of course almost certainly already have had to satisfy the relevant regulatory authorities that his repackaging process carries no risk of damage to the condition of the products. The Court has already explained (82) that, in the context of the second BMS condition, the risk in question must be a real risk, as opposed to a hypothetical or abstract risk. 96. In my view, it is therefore for the parallel importer to discharge the burden of proving that there is no adverse effect. The third condition: clear identification of importer and manufacturer 97. The parallel importer both determines and controls the repackaging. He specifies such matters as the colour, size and typeface used to display information and the location of the information on the package. It is therefore for the parallel importer to discharge the burden of showing that both the trade mark owner and the parallel importer are clearly identified on the repackaged product. The fourth condition: presentation not damaging to reputation 98. I have already indicated that, in my view, the fourth BMS condition is infringed if the packaging is such as to give rise to a serious risk that the reputation of the trade mark will be damaged. (83) It follows that the burden of proving that that is the case should be borne by the trade mark owner. He is in the best position to assess whether the repackaging presents no risk, or a possible risk, of damaging the trade mark’s reputation. Should he consider that the risk is serious, he is best placed to present evidence to make good that assertion. He should therefore bear the positive burden of proving interference with his trade mark rights. (84) The fifth condition: notice 99. The parallel importer by definition controls whether, when and by what means he informs the trade mark owner that he intends to repackage the trade-marked product and to sell it in the Member State of importation. It follows that he should bear the burden of proving that he has taken all reasonable steps to give due notice. (85) Conclusion 100. For the reasons given above, I consider that the questions referred by the Court of Appeal (England and Wales) (Civil Division) should be answered as follows: – The five conditions set out in Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb [1996] ECR I-3457 (‘the BMS conditions’) do not apply where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal and external packaging to which the parallel importer has applied an additional external label printed in the language of the Member State of importation. – The requirement that repackaging be necessary (the first BMS condition) applies merely to the fact of reboxing and does not extend to the precise manner and style thereof. – The requirement that the presentation of the repackaged product be not such as to be liable to damage the reputation of the trade mark or its owner (the fourth BMS condition) is not limited to defective, poor quality or untidy packaging: the issue is whether there is a serious risk that the reputation of the trade mark will be damaged. – Both inappropriate presentation of the trade mark and incorrect suggestion of a commercial link are capable in principle of damaging the trade mark’s reputation. Whether particular forms of repackaging cause such damage and whether the damage is sufficiently serious to amount to a ‘legitimate reason’ within the meaning of Article 7(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is a question of fact for the national court. – In circumstances where the importer has failed to give notice but has complied with the other BMS conditions, he infringes by every subsequent importation. It is for the national court to determine the appropriate sanction, which should be effective and dissuasive. It should also be proportionate and therefore should not be equal to the sanction that would apply if the other BMS conditions had also been breached. – The parallel importer bears the burden of proving compliance with the first, second, third and fifth BMS conditions. The trade mark owner bears the burden of proving serious risk of damage to the reputation of the trade mark or himself (the fourth BMS condition). 1 – Original language: English. 2 – Case C-143/00 [2002] ECR I-3759. 3 – It may be noted that Advocate General Jacobs made a similar point nine years ago in point 33 of his Opinion in Case C-349/95 Loendersloot [1997] ECR I-6227, where he expressed the view that ‘this Court would … be going beyond its functions under Article [234 EC] if it were to rule on all aspects of repackaging and relabelling which might be undertaken by parallel importers in relation to different types of product. Once the Court has spelt out the essential principle or principles, it must be left to the national courts to apply those principles in the cases before them’. 4 – Case 113/80 Commission v Ireland [1981] ECR 1625, paragraph 7. 5 – Case 78/70 Deutsche Grammophon [1971] ECR 487, paragraph 11. ‘Specific subject-matter’ is the rather infelicitous translation of the French ‘objet spécifique’. See chapter 6 of D. Keeling, Intellectual Property Rights in EU Law (2003) for an interesting historical and linguistic discussion. 6 – Point 14 of the Opinion of Advocate General Jacobs in Case C-10/89 HAG [1990] ECR I-3711 (HAG II). 7 – Case 16/74 Centrafarm v Winthrop [1974] ECR 1183, paragraph 8. 8 – There were analogous developments in the context of other intellectual property rights: see Deutsche Grammophon, cited in footnote 5, concerning rights related to copyright, Case 15/74 Centrafarm v Sterling Drug [1974] ECR 1147 concerning patents and Case 58/80 Dansk Supermarked [1981] ECR 181 concerning copyright. 9 – Centrafarm v Winthrop, cited in footnote 7, paragraph 12. 10 – Case 102/77 [1978] ECR 1139, paragraph 7. 11 – 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). 12 – Since the present case does not concern services, I shall restrict future discussion to goods. 13 – First recital in the preamble as rephrased by the Court in Case C-206/01 Arsenal Football Club [2002] ECR I-10273, paragraph 46. 14 – Case C-355/96 Silhouette [1998] ECR I-4799, paragraph 27. 15 – In accordance with Article 65(2), in conjunction with Annex XVII, point 4, of the Agreement on the European Economic Area of 2 May 1992 (OJ 1994 L 1, p. 3), Article 7(1) has been amended for the purposes of the Agreement so that the expression ‘in the Community’ has been replaced by ‘in a Contracting Party’. Since however the present proceedings concern intra-Community trade, I will continue to refer to the Community rather than the European Economic Area in discussing the scope of Article 7(1). 16 – Case C-16/03 Peak Holding [2004] ECR I-11313, paragraph 34 and the case-law there cited. 17 – See point 5 above. 18 – Article 6 concerns limitations on the effects of a trade mark which are not relevant in the present case. 19 – Peak Holding, cited in footnote 16, paragraph 30 and the case-law there cited. 20 – Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb [1996] ECR I-3457, paragraph 41. 21 – Points 7 to 9. 22 – Cited in footnote 20. 23 – Cited in footnote 14, paragraph 35. 24 – The order for reference defines an overstickered product as a ‘product imported from another Member State in its original internal and external packaging to which the parallel importer has applied an additional label printed in the language of the Member State of importation’. 25 – The order for reference defines a reboxed product as a ‘product imported from another Member State in its original internal packaging but with a new exterior carton printed in the language of the Member State of importation’. 26 – Or in some cases marks, where the manufacturer’s name and logo have also been registered as such. 27 – Some of the blister packs and inhalers are themselves overstickered, but not so as completely to cover the original trade marks, and it does not appear that any issue is taken with this. 28 – Judgment of Laddie J delivered on 28 February 2000, [2000] 2 CMLR 571. 29 – Judgment of Laddie J delivered on 6 February 2003, [2003] EWHC 110 (Ch). 30 – Corroborated perhaps by the fact that each side argued that, as a result of the Court’s ‘clarification’, it had in whole or large part won the trade mark part of the action. 31 – Case C-379/97 [1999] ECR I-6927. 32 – Question 2(a). 33 – Bristol-Myers Squibb, cited in footnote 20, paragraph 55, Joined Cases C-71/94, C-72/94 and C-73/94 Eurim-Pharm [1996] ECR I-3603, Loendersloot, cited in footnote 3, paragraph 27, and Boehringer I. 34 – Hoffmann-La Roche, cited in footnote 10, Case 1/81 Pfizer [1981] 2913, Bristol-Myers Squibb, cited in footnote 20, Pharmacia & Upjohn, cited in footnote 31, Loendersloot, cited in footnote 3, paragraph 27, and Boehringer I. 35 – Paragraph 55. 36 – Paragraph 46. 37 – Case C-352/95 [1997] ECR I-1729. 38 – Paragraph 23. 39 – See paragraphs 65 and 66. 40 – See paragraph 64. 41 – Cited in footnote 10. 42 – Paragraph 7. 43 – As the wording of the question assumes. 44 – Question 1(b). (Question 1(a) is considered below, at points 81 to 99.) 45 – Cited in footnote 3, paragraph 46. 46 – It is perhaps worth pointing out that the question is limited to changes to the outer packaging. For that reason, the claimants’ attempted analogy with the marketing of branded cars in China (described by the Commission at the hearing as ‘frankly silly’) does not seem to me to be particularly helpful. If anything, in fact, the example of car marketing undermines the claimants’ case, since dealers frequently co-brand by, for example, ensuring that their name is on the number plate or elsewhere on the car. 47 – Paragraph 30. 48 – Cited in footnote 10. 49 – Paragraph 7. The Court then went on (in paragraphs 9 to 12) to develop the forerunner of what has become the necessity test, and touched more briefly on what are now the other BMS conditions. 50 – Point 13 above. 51 – See the Explanatory Memorandum to the Proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks (COM(80) 635 final, 19 November 1980), commentary on Article 6. 52 – Cf. Pfizer, cited in footnote 34, where the parallel importer followed the Hoffmann-LaRoche requirements to the letter, and the Court endorsed his approach. 53 – Case E-3/02, judgment of 8 July 2003, ETMR 2004, p. 1. 54 – Case C-443/99 [2002] ECR I-3703. 55 – Cited in footnote 31. 56 – Paragraphs 41 to 45. 57 – Cited in footnote 31, paragraph 43. Although the passage cited refers to removal and replacement of the trade mark rather than repackaging more generally, it is clear from paragraphs 37 to 39 of the judgment that the Court considers the two situations to be governed by the same principles. 58 – By Eli Lilly, one of the claimants. 59 – Question 1(c). 60 – Notwithstanding that wording, Article 7(2) does not itself confer a right of action. The trade mark owner who wishes to oppose an alleged infringement must still bring himself within Article 5(1) of the Directive: see point 19 above. 61 – Case C-337/95 [1997] ECR I-6013, paragraphs 43 and 46. 62 – Case C-63/97 [1999] ECR I-905, paragraph 51. 63 – ‘Ainsi’ in the French text. 64 – Question 1(d). 65 – See also Pfizer, cited in footnote 34. 66 – Paragraph 46. 67 – Paragraph 55. 68 – Operative part and paragraph 67. 69 – Question 3. 70 – Paragraph 12. 71 – Paragraph 78, echoed in Boehringer I, paragraph 61. See also Loendersloot, cited in footnote 3, paragraph 49. 72 – Point 133. 73 – Question 1(a). 74 – Question 1(d). 75 – See Case C-405/03 Class International, paragraph 73 of the judgment of 18 October 2005. 76 – See, e.g., the phrasing of paragraphs 49, 50, 69, 73, 74 and 78 of Bristol-Myers Squibb. 77 – Case C-244/00 Van Doren [2003] ECR I-3051, paragraphs 37 and 41. 78 – Paragraph 56. 79– For example, because such packs still display, partially, information in a language that elderly patients do not know and may distrust, or, more generally, because patients may suspect that such packs have been tampered with. 80 – Paragraph 59 of Bristol-Myers Squibb. 81 – Paragraph 60 of Bristol-Myers Squibb. 82 – See paragraphs 61 to 63 of Bristol-Myers Squibb. 83 – Point 61 above. 84 – Cf. Van Doren, cited in footnote 77, paragraph 41. The Court held that, in circumstances where there is a real risk of market partition if the importer bears the burden of proving that the goods were placed on the market in the EEA by or with the consent of the trade mark owner, the latter has first to prove that the goods were initially placed on the market outside the EEA, in order to claim interference with the rights conferred upon him by Article 5(1) of the Directive, before the parallel importer has to demonstrate subsequent marketing within the EEA by the trade mark owner or with his consent. See also Class International, cited in footnote 75, paragraphs 70 to 75 for an illustration of the Court determining where the onus of proving interference with trade mark rights lies. 85 – I put it in those terms because I do not consider that the importer should be penalised if he took all reasonable steps to give notice but for some reason, for example a failure of communication within the trade mark owner’s organisation, the notice failed to reach the relevant department.