Opinion of the Advocate General — ECLI:EU:C:2008:547
Date: 2008-10-09
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Austria

Summary of the Judgment 1. Approximation of laws – Trade marks – Directive 89/104 – Products put on the market in a Member State by the proprietor or with his consent – Importation into another Member State after repackaging and reaffixing of the trade mark – Opposition of the proprietor (Council Directive 89/104, Art. 7(2)) 2. Approximation of laws – Trade marks – Directive 89/104 – Parallel imports of pharmaceutical products after repackaging and reaffixing of the trade mark – Opposition of the proprietor (Council Directive 89/104, Art. 7(2)) 1. Article 7(2) of Directive 89/104 on trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that the trade mark proprietor may legitimately oppose the further marketing of a pharmaceutical product where the importer has repackaged the product and reaffixed the trade mark unless: – 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 proprietor 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; – it is shown that the repackaging cannot affect the original condition of the product inside the packaging; – the new packaging clearly states who repackaged the product and the name of the manufacturer; – the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the packaging must not be defective, of poor quality, or untidy; – the importer gives notice to the trade mark proprietor before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product. Where it is established that repackaging of the pharmaceutical product is necessary for further marketing in the Member State of importation, the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor. (see paras 23, 30, operative part 1) 2. Article 7(2) of Directive 89/104 on trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, is to be interpreted as meaning that it is for the parallel importer to furnish to the proprietor of the trade mark the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation. The kind of information to be furnished depends, moreover, on the facts of each case. It cannot, prima facie, be excluded that it may, in exceptional cases, involve disclosing the Member State of export, where the absence of that information would prevent the proprietor of the trade mark from evaluating the need to repackage. In a situation where it is established that the details furnished are used by the proprietor of the trade mark to enable him to detect weaknesses in his sales organisation and thus combat parallel trade in his products, it is under the provisions of the EC Treaty on competition that those engaged in parallel trade should seek protection against action of the latter type. (see paras 34-37, operative part 2)