Opinion of the Advocate General — ECLI:EU:C:1998:559
Date: 1998-11-19
Language of the case: Danish
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Free movement of goods;Measures having equivalent effect;Intellectual, industrial and commercial property;Approximation of laws;Quantitative restrictions
Procedure: Reference for a preliminary ruling
Origin: Denmark

Summary of the Judgment 
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) 
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SUMMARY — CASE C-379/97 
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) 
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 move­
ment of goods within the common 
market, those two provisions, which 
pursue the same result, must be inter­
preted in the same way. 
2. The capacity of a trade-mark proprie­
tor 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 — repack­
aged 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 
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PHARMACIA & UPJOHN V PARANOVA 
opposition contributes to the artificial 
partitioning of the markets between 
Member States. 
That condition cannot be applied dif­
ferently depending on whether the 
original trade mark is reaffixed after 
repackaging or replaced, unless sepa­
rate 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 neces­
sary to enable the products to be 
marketed by the parallel importer in 
the importing Member State, there are 
obstacles to intracommunity trade giv­
ing rise to artificial partitioning of the 
markets between Member States, whe­
ther 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 neces­
sary — 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 Mem­
ber State of import — to assess whe­
ther 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. 
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