Opinion of the Advocate General — ECLI:EU:C:2022:387
Date: 2022-05-12
Language of the case: Finnish
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Finland

Translation C-197/21 – 1 
Case C-197/21 
Request for a preliminary ruling 
Date lodged:  
29 March 2021 
Referring court:  
Korkein oikeus (Finland) 
Date of the decision to refer:  
9 March 2021 
Appellants:  
Soda-Club (CO2) SA 
SodaStream International BV 
Respondent:  
MySoda Oy 
  
KORKEIN OIKEUS ORDER Case reference 
S2019/620  
APPELLANTS SodaStream International B.V. 
Soda-Club (C02) SA 
  
MySoda Oy 
 
RESPONDENTS MySoda Oy 
 
 SodaStream International B.V. 
Soda-Club (C02) SA 
 
SUBJECT MATTER Dispute concerning trade mark infringement 
 
EN 
REQUEST FOR A PRELIMINARY RULING OF 9. 3. 2021 – CASE C-197/21 
 
2  
DECISION OF THE KORKEIN OIKEUS (Supreme Court, Finland) 
Subject matter of the proceedings 
1 The dispute concerns the right of a company that refills and distributes CO2 
cylinders put on the market in a Member State by the trade mark proprietor or 
with its consent to remove a label bearing the trade mark proprietor’s trade mark 
from the cylinders and to replace it with its own. As regards EU trade marks, the 
present case concerns the interpretation of Article 13(2) of Council Regulation 
(EC) No 207/2009 of 26 February 2009 on the European Union trade mark, as 
amended by Regulation (EU) 2015/2424 of the European Parliament and of the 
Council […] [Or. 2] (EU Trade Mark Regulation), which entered into force on 
23 March 2016, and the interpretation of Article 15(2) of Regulation (EU) 
2017/1001 of the European Parliament and of the Council of 14 June 2017 on the 
European Union trade mark (new EU Trade Mark Regulation). As regards 
national trade marks, the present case concerns the interpretation of Article 7(2) of 
Directive 2008/95/EC of the European Parliament and of the Council of 
22 October 2008 to approximate the laws of the Member States relating to trade 
marks (Trade Mark Directive) and the interpretation of Article 15(2) of Directive 
(EU) 2015/2436 of the European Parliament and of the Council of 16 December 
2015 to approximate the laws of the Member States relating to trade marks (new 
Trade Mark Directive). 
2 It is open to interpretation whether the so-called Bristol-Myers Squibb criteria 
(judgment of 11 July 1996, Joined Cases C-427/93, C-429/93 and C-436/93, 
Bristol-Myers Squibb and Others [, EU:C:1996:282]), which have been developed 
in the case-law of the Court of Justice in respect of the assessment of the 
repackaging of goods, in particular in the case of parallel imports of 
pharmaceutical products, can be applied to the conduct of a company that refills 
and distributes CO2 cylinders. This concerns, in particular, the applicability of the 
condition of necessity, which is one of the abovementioned criteria, that is to say, 
whether the trade mark proprietor can prevent the distribution of cylinders where 
the removal of the trade mark proprietor’s label and the affixing of a new label are 
not necessary to enable the refilled cylinders to be put on the market in the 
Member State. [Or. 3] 
3 In that context, it is open to interpretation, first, whether a legitimate reason for 
the trade mark proprietor to oppose the resale of repackaged products in the 
Member State is subject to uniform criteria, irrespective of whether it is a case of 
parallel imports of products acquired in another Member State or of the 
repackaging of goods originally put on the market in the same Member State. 
Furthermore, it is open to interpretation whether the conduct of the company that 
refills the CO2 cylinders is to be regarded as repackaging of a product within the 
meaning of the case-law of the Court of Justice, which includes the affixing of a 
new label. 
SODA-CLUB (CO2) AND SODASTREAM INTERNATIONAL 
 
3 
4 If the condition of necessity does apply, it is also open to interpretation what 
importance for the fulfilment of that criterion is to be attached to the intended use 
of the products under consideration (in casu, the CO2 cylinders), that is to say, the 
fact that they are intended to be refilled. In that regard, it is also unclear whether 
the replacement of labels as regularly carried out by the refilling company can be 
considered to be necessary for the market access of the products on the ground 
that, in the case of some cylinders returned for refilling, the original label may 
have been damaged or already replaced by the label of a filling company other 
than the trade mark proprietor which originally put the cylinder on the market. 
[Or. 4] 
The relevant facts 
Pending case 
5 Soda-Club (C02) SA (hereinafter, together with SodaStream International B.V.: 
‘SodaStream’) is the proprietor of the national trade marks No 70211 
SODASTREAM and No 77984 SODASTREAM. In addition, Soda-Club (CO2) 
SA is the proprietor of the EU trade mark No 87957 SODA-CLUB. SodaStream 
International B.V. is the proprietor of the EU trade marks No 295923 
SODASTREAM, No 1039965 SODASTREAM and No 1246511 
SODASTREAM. The abovementioned registered trade marks SODASTREAM 
and SODA-CLUB cover both the carbon dioxide and the cylinders in question. 
6 SodaStream distributes carbonating machines for beverages of the SodaStream 
trade mark in Finland. The sales packaging of the machines contains, inter alia, a 
refillable aluminium CO2 cylinder engraved with the SODASTREAM or SODA-
CLUB trade mark of SodaStream. The CO2 cylinder also bears a label displaying 
the SODASTREAM or SODA-CLUB trade mark. SodaStream also separately 
sells the CO2 cylinders in question after refilling them. 
7 MySoda Oy distributes, in Finland, carbonating machines for beverages of the 
MySoda trade mark in packaging that does not contain a CO2 cylinder. Since June 
2016, MySoda Oy has sold and put on the market CO2 cylinders that are filled in 
Finland and [Or. 5] are compatible with, inter alia, its own carbonating machines 
and those of SodaStream. Some of those cylinders were refilled CO2 cylinders 
originally put on the market by SodaStream, as described above. 
8 After receiving from distributors the empty CO2 cylinders originating from 
SodaStream and returned by consumers, MySoda Oy first removed the 
SodaStream label from the cylinders. After refilling the cylinders, it affixed its 
own label in such a way that the engravings on those cylinders, including the 
SODASTREAM or SODA-CLUB trade mark, remained visible. 
9 MySoda Oy used two different labels on the cylinders in question: 
REQUEST FOR A PRELIMINARY RULING OF 9. 3. 2021 – CASE C-197/21 
 
4  
– A pink label that prominently displayed the defendant’s MySoda logo in 
large letters along with the text ‘Finnish carbon dioxide for carbonating 
machines’. The product information in small print contained a reference to the 
company that had filled the cylinder, the current company name of which is 
‘MySoda Oy’, and to the MySoda Oy website for further information. 
– A white label that displayed the words ‘carbon dioxide’ in large letters in 
five languages. The product information in small print contained a reference to the 
company that had filled the cylinder, the current company name of which is ‘My 
[Or. 6] Soda Oy’, and the statement that that company had no connection with the 
original supplier of the cylinder or with its company or trade mark, which 
appeared on the cylinder. Reference was made to the MySoda Oy website for 
further information. 
10 SodaStream did not give MySoda Oy its consent to engage in the conduct 
described above. 
11 CO2 cylinders are available at retail level in Finland, both as ‘off-the-shelf’ 
products and at shop information stands and cash registers. Neither SodaStream 
nor MySoda Oy offers their CO2 cylinders directly to consumers themselves 
through their own stores. 
12 By its action, SodaStream primarily sought a declaration that MySoda Oy had 
infringed SodaStream’s abovementioned trade marks in Finland by using them, 
without authorisation, in its commercial activities by putting on the market and 
selling such refilled CO2 cylinders bearing those trade marks, 
(i) on which the trade mark of MySoda Oy was also affixed without the consent 
of SodaStream and on which the original labels belonging thereto had been 
replaced by new labels; or 
(ii) on which the original labels belonging thereto had been replaced by new 
labels. 
SodaStream also sought an injunction against what it considered to be infringing 
conduct and asserted claims for remuneration and compensation based [Or. 7] on 
the trade mark infringement. 
Interlocutory judgment of the Markkinaoikeus (Commercial Court, Finland) of 
5 September 2019 
13 The Commercial Court ruled on SodaStream’s claims for declaratory and 
injunctive relief by way of an interlocutory judgment. It upheld those claims in so 
far as MySoda Oy had used pink labels, as described above, and rejected the 
claims with regard to the white labels. 
14 That court found that the exclusive right conferred by SodaStream’s trade marks 
had been exhausted in respect of the CO2 cylinders originally put on the market by 
SODA-CLUB (CO2) AND SODASTREAM INTERNATIONAL 
 
5 
it. The dispute therefore concerned the question of whether SodaStream had a 
legitimate reason, within the meaning of the provisions applicable to the case, to 
oppose MySoda Oy’s conduct. 
15 In its assessment, the Commercial Court did not apply the Bristol-Myers Squibb 
criteria relied on by SodaStream, on the ground that the present case did not 
concern parallel imports, but rather a process carried out within one and the same 
Member State. Instead, the court based its decision on the judgment of the Court 
of Justice [of 14 July 2011] in Case C-46/10, Viking Gas, EU:C:2011:485. [Or. 8] 
16 The court held that it had not been shown that MySoda Oy’s conduct changed or 
impaired the CO2 cylinders or their contents in such a way as to damage 
SodaStream’s reputation on account of the associated safety risks or cause it harm 
such as would constitute a legitimate reason to oppose MySoda Oy’s conduct. 
17 The Commercial Court took the view that MySoda Oy had also not created a false 
impression of an economic link between itself and SodaStream in so far as it had 
used white labels. 
18 By contrast, the court held that the use of the pink label was liable to create the 
impression in the mind of the average consumer, who is reasonably well-informed 
and reasonably observant, that there was some kind of economic link between 
SodaStream and MySoda Oy. The court took the view that, regard being had to, 
inter alia, the circumstances of the sale, the label on which the MySoda Oy logo 
was placed in a dominant position was liable to create the impression in the mind 
of a consumer inspecting the CO2 cylinder that the latter originated from MySoda 
Oy. SodaStream had a legitimate reason to oppose MySoda Oy’s conduct in that 
respect. [Or. 9] 
Appeals before the Supreme Court 
19 SodaStream and MySoda Oy appealed against the interlocutory judgment of the 
Commercial Court. The Supreme Court granted both parties leave to appeal. The 
issue before the Supreme Court on appeal is whether SodaStream has a legitimate 
reason to oppose MySoda Oy’s conduct. 
20 SodaStream submits, in essence, that the removal of the label bearing its trade 
mark and indicating the origin of the CO2 cylinder and the replacement thereof by 
MySoda Oy’s label constitute in themselves a legitimate reason to oppose 
MySoda Oy’s conduct. According to SodaStream, that conduct constitutes 
relabelling of a product which is such as to jeopardise, in principle, the trade 
mark’s function of guaranteeing origin and to which the Bristol-Myers Squibb 
criteria relating to repackaging laid down in the case-law of the Court of Justice, 
or at any rate the condition of necessity, must therefore be applied. SodaStream 
takes the view that it is entitled to oppose MySoda Oy’s conduct on the ground 
that replacement of the label is not necessary in order for the refilled CO2 
cylinders to be put on the market. According to SodaStream, it is possible for the 
REQUEST FOR A PRELIMINARY RULING OF 9. 3. 2021 – CASE C-197/21 
 
6  
information regarding the company that refills the cylinder to be provided in a 
way that interferes less with the rights of the trade mark proprietor, for example 
by affixing an adhesive label to the cylinder. SodaStream also invokes as a 
legitimate reason the false impression, created by MySoda Oy’s conduct, of an 
economic link between itself and MySoda Oy. [Or. 10] 
21 MySoda Oy takes the view that the Bristol-Myers Squibb criteria do not apply in a 
situation involving trade within one Member State and that the replacement of the 
label affixed to the refilled CO2 cylinder cannot be equated with the repackaging 
of an original product sold by way of parallel imports and sold for the first time to 
the consumer. It submits that the replacement of the label does not jeopardise the 
trade mark’s function as a guarantee of origin, because the target public will 
understand that the label indicates only the origin of the carbon dioxide in the 
cylinder and the company that refills the cylinder and that the engraving on the 
latter indicates its origin. MySoda Oy takes the view that the replacement of the 
label is in any event necessary for putting the refilled cylinder on the market 
because the provision of information about the company that previously filled the 
cylinder on a label affixed to it could create confusion among consumers and 
traders as to who last filled it and who is liable for it. In addition, MySoda Oy 
submits, it is essential for traders that there should be only one barcode on the 
cylinder. According to MySoda Oy, it is also necessary to replace the label 
because the original label on some of the cylinders put on the market by 
SodaStream may be damaged or may have become detached. MySoda Oy submits 
that its conduct is in line with an established practice in the industry in Finland, 
which is also followed by SodaStream itself. According to MySoda Oy, the labels 
that it removes from the refilled cylinders may also be the labels of previous 
refilling companies other than [Or. 11] the company which originally put the 
cylinders on the market and is the proprietor of the trade mark engraved on them. 
Applicable legislation 
EU law 
22 According to Article 13 of the EU Trade Mark Regulation and Article 15(1) of the 
new EU Trade Mark Regulation, an EU trade mark does not entitle the proprietor 
to prohibit its use in relation to goods which have been put on the market in the 
European Economic Area under that trade mark by the proprietor or with his 
consent. According to paragraph 2, paragraph 1 is not to apply where there exist 
legitimate reasons for the proprietor to oppose further commercialisation of the 
goods, especially where the condition of the goods is changed or impaired after 
they have been put on the market. 
23 In accordance with Article 7 of the Trade Mark Directive and Article 15(1) of the 
new Trade Mark Directive, which corresponds, in substance, to the first-
mentioned provision, a trade mark does not entitle the proprietor to prohibit its use 
in relation to goods which have been put on the market in the [European Union] 
SODA-CLUB (CO2) AND SODASTREAM INTERNATIONAL 
 
7 
under that trade mark by the proprietor or with the proprietor’s consent. 
According to paragraph 2, paragraph 1 is not to apply where there exist legitimate 
reasons for the proprietor to oppose further commercialisation of the goods, 
especially where the condition of the goods is changed [Or. 12] or impaired after 
they have been put on the market. 
National legislation 
24 According to Paragraph 9(1) of the Tavaramerkkilaki (Law on trade marks), 
which is applicable to national trade marks, a trade mark proprietor may not 
prohibit the use of the trade mark in relation to goods which have been put on the 
market in the European Economic Area under that trade mark by the proprietor or 
with the proprietor’s consent. According to subparagraph 2 of that paragraph, 
without prejudice to subparagraph 1, the trade mark proprietor may prohibit the 
use of the trade mark in relation to goods if the proprietor has a legitimate reason 
to oppose the further offering or putting on the market of the goods. In particular, 
the trade mark proprietor may prohibit the use of the trade mark where the 
condition of the goods is changed or impaired after they have been put on the 
market. The national provision is based on Article 7 of the Trade Mark Directive 
or, respectively, Article 15 of the new Trade Mark Directive. 
25 On account of the period of the alleged infringement, Paragraph 10(a) of the Law 
on trade marks (as amended by Law No 1715/1995), which was in force until 
31 August 2016, and Paragraph 8 of the Law on trade marks (as amended by Law 
No 616/2016), which was in force until 30 April 2019, are also applicable to the 
case, the content of which corresponds, in substance, to the abovementioned 
provision of the Law on trade marks currently in force. [Or. 13] 
The need for the preliminary ruling 
26 The Supreme Court has been seised of a trade mark infringement dispute in which 
the delivery of a reasoned decision requires an interpretation of provisions of the 
EU trade mark regulations and of the trade mark directives in relation to the 
exhaustion of the rights conferred by a trade mark. EU law does not contain 
detailed rules on the conditions under which a trade mark proprietor has a 
legitimate reason to oppose the further commercialisation of goods put on the 
market. Nor does the Court of Justice’s case-law on such a legitimate reason 
provide a clear answer to the questions raised in this dispute. 
Background to Questions 1, 2 and 3 
27 In accordance with settled case-law of the Court of Justice, at any rate the 
repackaging of pharmaceutical products imported in parallel, which also includes 
relabelling, creates by its very nature risks for the guarantee of origin of the trade 
mark and is thereby prejudicial to its specific subject matter (judgment of 23 April 
2002, C-143/00, Boehringer Ingelheim and Others, paragraphs 29 and 30, 
REQUEST FOR A PRELIMINARY RULING OF 9. 3. 2021 – CASE C-197/21 
 
8  
[EU:C:2002:246]; judgment of 26 April 2007, C-348/04, Boehringer Ingelheim 
and Others, [EU:C:2007:249,] paragraphs 28 to 30). In accordance with settled 
case-law, the trade mark proprietor may prohibit the commercialisation of 
repackaged products if the trader fails to prove that the conduct satisfies the 
Bristol-Myers Squibb criteria (judgment of 26 April 2007, C-348/04, Boehringer 
Ingelheim and Others, EU:C:2007:249, paragraphs 52 and 53). [Or. 14] The trade 
mark proprietor may therefore prohibit the repackaging of a product unless the 
repackaging is necessary in order to enable the marketing of the products imported 
in parallel and the legitimate interests of the proprietor are safeguarded (for 
example, judgment of 23 April 2002, C-143/00, Boehringer Ingelheim and 
Others, EU:C:2002:246, paragraph 34). 
28 The Court of Justice has provided guidance on the assessment of the existence of a 
legitimate reason in a case where a company that refills gas cylinders put on the 
market in the same Member State had affixed its own labels to the cylinders 
(judgment of 14 July 2011, Viking Gas, C-46/10, EU:C:2011:485). In its decision, 
the Court of Justice pointed out that a legitimate reason for opposing the conduct 
of the refilling company could exist, inter alia, when the use of the sign is such as 
to give the impression that there is a commercial connection between the trade 
mark proprietor and the refilling company (paragraph 37 of the judgment). 
However, the Court of Justice did not refer in that context to its case-law on 
repackaging or to the Bristol-Myers Squibb criteria. 
29 On the basis of the case-law of the Court of Justice to date, it is not clear whether 
the condition of necessity applies to the repackaging of goods which have been 
put on the market in the same Member State. The Viking Gas judgment cited 
above differs from the case here at issue in that, inter alia, the former concerned a 
case in which the trade marks [Or. 15] that had been affixed to the gas cylinders 
by the trade mark proprietor which had originally put them on the market had not 
been removed from them or concealed. The Court of Justice considered that this 
constituted a relevant factor in so far as it seemed to rule out that labelling from 
altering the condition of the cylinders by masking their origin (paragraph 41 of the 
judgment). In the present case, however, the company which refills the CO2 
cylinders removed the label bearing the trade mark proprietor’s trade mark and 
replaced it with its own. Both the original label and the refilling company’s label 
covered most of the cylinder’s surface, leaving only the upper part and neck of the 
cylinder uncovered, on which, inter alia, the trade mark of the original distributor 
of the cylinder was engraved. 
30 Furthermore, it is not clear whether the removal of the trade mark proprietor’s 
label and the affixing of a new label to the product, such as has taken place in the 
main proceedings, is to be regarded as repackaging within the meaning of the 
case-law of the Court of Justice cited above, which also includes relabelling. It is 
open to interpretation what significance is to be attached in this respect to the 
intended use of the product in question, that is to say, the CO2 cylinder, and the 
fact that the product offered by the trader consists of both the cylinder originating 
from the trade mark proprietor and the carbon dioxide originating from the 
SODA-CLUB (CO2) AND SODASTREAM INTERNATIONAL 
 
9 
refilling company. On the assumption that the target public perceives the label as 
referring exclusively to the origin of the carbon dioxide – even if the trade mark 
proprietor also originally [Or. 16] affixed the label bearing the trade mark to the 
cylinder when putting the CO2 cylinder on the market so as to provide a guarantee 
of the origin of the cylinder – it is unclear whether this can be of decisive 
importance in that respect. 
Background to Question 4 
31 In the case-law of the Court of Justice, the view is taken that the person carrying 
out the relabelling must use means which make parallel trade feasible while 
causing as little prejudice as possible to the specific subject matter of the trade 
mark right. Thus, if the statements on the original labels comply with the rules on 
labelling in force in the Member State of destination, but those rules require 
additional information to be given, it is not necessary to remove and reaffix or 
replace the original labels. This is because the mere application to the bottles in 
question of a sticker with the additional information may suffice (judgment of 
11 November 1997, C-349/95, Loendersloot, EU:C:1997:530, paragraph 46). It 
has also been held in the case-law that the condition of necessity will not be 
satisfied if replacement of the trade mark is explicable solely by the parallel 
importer’s attempt to secure a commercial advantage (judgment of 12 October 
1999, C-379/97, Upjohn, EU:C:1999:494, paragraph 44). 
32 When refilled CO2 cylinders are offered to consumers, the latter must be provided 
with information about the company that refills the cylinders. If the replacement 
of the label on a CO2 cylinder is to be assessed on the basis of the Bristol-Myers 
Squibb criteria, it is not clear from the case-law to date whether and to what extent 
the intended use of the products in question can be taken into account in the 
assessment of whether the condition of necessity [Or. 17] is met. The CO2 
cylinders in question are intended to be refilled and resold multiple times, which is 
likely to impair the condition of the original labels affixed to them. It is open to 
interpretation whether the fact that a label affixed to the cylinder by the trade mark 
proprietor has been damaged or become detached or the fact that another refilling 
company may have already previously replaced the original label with its own 
may constitute a circumstance on the basis of which the substitution of the label or 
the replacement thereof with that of the refilling company can be deemed to be 
necessary for the marketing of the refilled cylinder. 
Questions referred for a preliminary ruling 
33 After affording the parties the opportunity to comment on the content of the 
request for a preliminary ruling, the Korkein oikeus (Supreme Court) has decided 
to stay the proceedings and to refer the following questions to the Court of Justice 
of the European Union for a preliminary ruling: 
1. Do the so-called Bristol-Myers Squibb criteria developed in the Court of 
Justice’s case-law on repackaging and relabelling in cases of parallel imports, 
REQUEST FOR A PRELIMINARY RULING OF 9. 3. 2021 – CASE C-197/21 
 
10  
and in particular the so-called condition of necessity, also apply in the case of 
repackaging [Or. 18] or relabelling of goods, which had been put on the 
market in a Member State by the trade mark proprietor or with its consent, 
for the purposes of resale in the same Member State? 
2. Where the trade mark proprietor has affixed its trade mark to the 
cylinder, both on the label and engraved on the neck of the cylinder, when 
putting a cylinder containing carbon dioxide on the market, do the Bristol-
Myers Squibb criteria referred to above, and in particular the so-called 
condition of necessity, also apply when a third party refills the cylinder with 
carbon dioxide for the purposes of resale, removes the original label and 
replaces it with a label bearing that third party’s own trade mark, while at 
the same time the trade mark of the person that put the cylinder on the 
market continues to be visible in the engraving on the neck of the cylinder? 
3. In the situation described above, can the view be taken that the removal 
and replacement of the label bearing the trade mark jeopardises, in principle, 
the function of the trade mark as a guarantee of the origin of the cylinder, or 
is it of significance, with regard to the applicability of the conditions for 
repackaging and relabelling, that 
– it is to be assumed that the target public will perceive the label as 
referring exclusively to the origin of the carbon dioxide (and thus to the 
company that refills the cylinder); or 
– it is to be assumed that the target public will perceive the label as also 
referring, at least in part, to the origin of the cylinder? [Or. 19] 
4. If the removal and replacement of the label on CO2 cylinders is to be 
assessed on the basis of the condition of necessity, can the fact that the labels 
affixed to the cylinders put on the market by the trade mark proprietor have 
been accidentally damaged or become detached or have been removed and 
replaced by a previous refilling company constitute a [Or. 20] circumstance 
on the basis of which the replacement of the labels by a label of the refilling 
company, a process regularly carried out by the latter, is to be regarded as 
being necessary for putting the refilled cylinders on the market? 
[…]