Case C-16/03

Peak Holding AB

v

Axolin-Elinor AB, formerly Handelskompaniet Factory Outlet i Löddeköpinge AB

(Reference for a preliminary ruling from the Hovrätten över Skåne och Blekinge)

(Trade marks – Directive 89/104/EEC – Article 7(1) – Exhaustion of the rights conferred by a trade mark – Putting on the market of the goods in the EEA by the proprietor of the trade mark – Concept – Goods offered for sale to consumers and then withdrawn – Sale to an operator established in the EEA with the obligation to put the goods on the market outside the EEA – Resale of the goods to another operator established in the EEA – Marketing in the EEA)

Summary of the Judgment

1. Approximation of laws – Trade marks – Directive 89/104 – Goods put on the market in the Community or in the European Economic Area by the trade mark proprietor – Concept of ‘put on the market’ – Uniform interpretation in the Community legal order

(Council Directive 89/104, Art. 7(1))

2. Approximation of laws – Trade marks – Directive 89/104 – Goods put on the market in the Community or in the European Economic Area by the trade mark proprietor – Concept of goods ‘put on the market’ – Goods imported or offered for sale in the European Economic Area by the trade mark proprietor but remaining unsold – Excluded

(Council Directive 89/104, Art. 7(1))

3. Approximation of laws – Trade marks – Directive 89/104 – Goods put on the market in the Community or in the European Economic Area by the trade mark proprietor – Sale to an operator established in the European Economic Area – Clause prohibiting resale in the European Economic Area – Resale in breach of the prohibition – Exhaustion of the proprietor’s exclusive right

(Council Directive 89/104, Art. 7(1))

1. The expression ‘put on the market’ in the European Economic Area used in Article 7(1) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area, constitutes a decisive factor in the extinction of the exclusive right of the proprietor of the trade mark laid down in Article 5 of that directive. It must therefore be given a uniform interpretation in the Community legal order.

(see paras 31-32)

2. Article 7(1) of First Directive 89/104 on trade marks, as amended by the Agreement on the European Economic Area (EEA), must be interpreted as meaning that goods bearing a trade mark cannot be regarded as having been put on the market in the EEA where the proprietor of the trade mark has imported them into the EEA with a view to selling them there or where he has offered them for sale to consumers in the EEA, in his own shops or those of an associated company, without actually selling them.

While a sale which allows the proprietor to realise the economic value of his trade mark exhausts the exclusive rights conferred by the directive, where, on the other hand, the proprietor imports his goods with a view to selling them in the EEA or offers them for sale in the EEA, he does not put them on the market within the meaning of that provision, since such acts do not transfer to third parties the right to dispose of the goods bearing the trade mark and do not allow the proprietor to realise the economic value of the trade mark. Moreover, even after such acts, the proprietor retains his interest in maintaining complete control over the goods bearing his trade mark, in order in particular to ensure their quality.

(see paras 40-42, 44, operative part 1)

3. The stipulation, in a contract of sale relating to goods bearing a trade mark concluded between the proprietor of the trade mark and an operator established in the European Economic Area (EEA), of a prohibition on reselling in the EEA concerns only the relations between the parties to that act. It does not mean that there is no putting on the market in the EEA within the meaning of Article 7(1) of First Directive 89/104 on trade marks, as amended by the Agreement on the EEA, and thus does not preclude the exhaustion of the proprietor’s exclusive rights in the event of resale in the EEA in breach of the prohibition.

(see paras 54, 56, operative part 2)