4.

In my opinion, the abovementioned judgment of 23 May 1978 in the case of Hoffmann-La Roche v Centrafarm provides all that is necessary for a solution to the problem described above. I note that in that case too the preliminary questions arose from a situation where a medicinal preparation had been imported from Great Britain into the Federal Republic of Germany and repackaged by the importer, and opposition proceedings had been initiated against the latter, under German trademark legislation, by the subsidiary of the multinational group to which the British manufacturer of the product also belonged. But the repackaging had affected the entire package (bottles and packets) and the importer had printed the manufacturer's trade mark on the new wrapping. The Court, having made clear what it was that had to be established (specifically “whether the repackaging of a trademarked product... is capable of affecting the original condition of the product”; paragraph 9 of the decision), admitted the possibility “of the repackaging being undertaken in such a way that the original condition of the product cannot be affected” and added “this may be so where, for example, the proprietor of the trade mark has marketed the product in a double packaging and the repackaging affects only the external packaging, leaving the internal packaging intact...” (paragraph 10 of the decision). In the operative part of the judgment, the Court considered that “The proprietor of a trademark right which is protected in two Member States at the same time” is justified, within the meaning of the first sentence of Article 36 of the EEC Treaty, “... in preventing a product to which the trade mark has lawfully been applied in one of those States from being marketed in the other Member State after it has been repacked in new packaging to which the trade mark has been affixed by a third party”. But immediately thereafter it stated: “However, such prevention of marketing constitutes a disguised restriction on trade between Member States within the meaning of the second sentence of Article 36 where: It is established that the use of the trademark right by the proprietor, having regard to the marketing system which he has adopted, will contribute to the artificial partitioning of the markets between Member States; It is shown that the repackaging cannot adversely affect the original condition of the product; The proprietor of the mark receives prior notice of the marketing of the repackaged product; It is stated on the new packaging by whom the product has been re-packaged”. That decision must be the point of departure for the answers to the questions raised by the Landgericht Hamburg. Let us for the moment leave aside the question of the partitioning of national markets as a result of the exercise of the trademark right, which is the subject-matter of the second question. With regard to the other three conditions indicated in the judgment as prerequisites for the applicability of the second sentence of Article 36 of the EEC Treaty (in other words, for a disguised restriction on trade between Member States to be identified) I think it is justified to state: (a) that the original condition of the product is not adversely affected where the repackaging leaves the internal packaging intact; (b) that it is not essential to inform the proprietor of the trade mark that the repackaged product has been put on sale if the trade mark has not been reaffixed by the importer and the trade mark which is visible is the original one; and (c) that it is essential to indicate on the new external packaging that the importer has repackaged the product. These three statements require some comment. With regard to point (a) I would mention that in the judgment in Hoffmann-La Roche v Centrafarm the Court did not follow the rigidly formalistic approach which the plaintiffs adopted on the basis of German law, seeing an infringement of the trademark right in any change, even if merely external, to the packaging. The Court's view was that that right can only be lawfully exercised to prevent interference by third parties with the packaging where such interference seems liable to entail a risk of adverse effects on the intrinsic properties of the product; and as an example of repackaging in which that risk was not inherent it specifically indicated replacement of the external packaging with the internal packaging being left intact. It is moreover clear that, if the whole packaging created by the manufacturer were included within the concept of “original condition of the product”, any repackaging would involve an alteration of that condition. Conversely, once it is admitted that a product may be repackaged without any change in its original condition, the simplest specific example is that of replacement of only the external packaging of a double-packed product. The example becomes still more persuasive if the original internal packaging is hermetically sealed, so that a change in the external box cannot jeopardize the intrinsic characteristics of the product. With regard to point (b) it should be recalled on what basis the Court declared that the parallel importer was obliged to give prior notice to the proprietor of the trade mark that the repackaged product was to be put onto the market: “Since it is in the proprietor's interest that the consumer should not be misled as to the origin of the product”, the product is to be sold with the trade mark affixed to the new packaging (judgment in Hoffmann-La Roche, paragraph 12 of the decision). The situation differs considerably where the trade mark is not reaffixed by the importer on the new packaging but is the original trade mark, affixed by the manufacturer to the internal packaging, and the new packaging is confined to the external layer. In those circumstances, neither the origin nor the authenticity of the goods may be contested and there is no reason for requiring that the proprietor of the trade mark be informed of the action taken by the parallel importer. It is nevertheless essential, as I have stated under point (c), that the importer should declare that he has repackaged the product, since total safeguard of origin is thereby ensured from another point of view, for whilst visibility of the trade mark affixed by the manufacturer reassures the consumer regarding the origin of the product, the declaration by the importer prevents the public from regarding the whole packaging (including the external layer) as originating from the manufacturer.