Coty Prestige Lancaster Group GmbH v Simex Trading AG.
Date: 2010-06-03
27. According to well‑established case‑law, Articles 5 to 7 of Directive 89/104 effect a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the Union (see, inter alia, Case C‑324/08 Makro Zelfbedieningsgroothandel and Others  [2009] ECR I‑0000, paragraph 20 and the case‑law cited).
28. In particular, Article 5 of the directive confers on the trade mark proprietor exclusive rights which entitle him, inter alia, to prevent any third party from importing goods bearing the mark, offering the goods, or putting them on the market or stocking them for these purposes. Article 7(1) of the directive contains an exception to that rule, in that it provides that the trade mark proprietor’s rights are exhausted where the goods have been put on the market in the EEA by him or with his consent (see, inter alia, Makro Zelfbedieningsgroothandel and Others , paragraph 21 and the case‑law cited).
29. Extinction of the exclusive right results either from the proprietor’s consent, whether express or implied, to a putting on the market in the EEA or from the putting on the market in the EEA by the proprietor himself or by an operator with economic links to the proprietor, such as, in particular, a licensee. The proprietor’s consent and the putting on the market in the EEA by him or by an operator with economic links to him, which are both equivalent to the renunciation of the exclusive right, thus both constitute a decisive factor in the extinction of that right (see, to that effect, Case C‑244/00 Van Doren + Q  [2003] ECR I-3051, paragraph 34; Case C‑59/08 Copad  [2009] ECR I-0000, paragraph 43; and Makro Zelfbedieningsgroothandel and Others , paragraph 24 and the case‑law cited).
30. In order to ensure the protection of the rights conferred by the trade mark while making possible the further marketing of goods bearing a trade mark without the proprietor of the trade mark being able to oppose that, it is essential that the proprietor can control the first putting of those goods on the market in the EEA, irrespective of the fact that they may have first been marketed outside that area, that marketing having no exhaustive effect for the purposes of Article 7(1) of Directive 89/104 (see, to that effect, inter alia, Makro Zelfbedieningsgroothandel and Others , paragraphs 31 and 32 and the case‑law cited).
31. Moreover, the rights conferred by the trade mark are exhausted only in respect of the individual items of the product which have first been put on the market in the EEA by the proprietor or with his consent. By contrast, the proprietor may continue to prohibit the use of the mark in pursuance of the exclusive right conferred on him by Directive 89/104 in respect of other items of that product which have not first been put on the market in the EEA in that way (see, to that effect, Case C‑173/98 Sebago and Maison Dubois  [1999] ECR I-4103, paragraphs 19 and 20).
37. In that regard, it must be pointed out that, even in situations where the goods in question were first placed on the market in the EEA by a person having no economic link to the proprietor of the trade mark and without his express consent, an intention to renounce the exclusive rights provided for in Article 5 of Directive 89/104 may follow from that proprietor’s implied consent (see Makro Zelfbedieningsgroothandel and Others , paragraph 19 and the case‑law cited).
38. It follows from the case‑law that, although such an intention will normally follow from an express statement of consent, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside or inside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights (Joined Cases C‑414/99 to C‑416/99 Zino Davidoff and Levi Strauss  [2001] ECR I-8691, paragraph 46).
39. In that regard, in paragraph 60 of Zino Davidoff and Levi Strauss , the Court also held that implied consent cannot be inferred:
– from the fact that the proprietor of the trade mark has not communicated to all subsequent purchasers of the goods placed on the market outside the EEA his opposition to marketing within the EEA;
– from the fact that the goods carry no warning of a prohibition on their being placed on the market within the EEA;
– from the fact that the trade mark proprietor has transferred the ownership of the products bearing the trade mark without imposing any contractual reservations and that, according to the law governing the contract, the property right transferred includes, in the absence of such reservations, an unlimited right of resale or, at the very least, a right to market the goods subsequently within the EEA.
43. That statement, since it clearly reflects the intention of the proprietor of the trade mark concerned that the goods bearing it should not be sold, whether inside or outside the EEA, constitutes, in itself and in the absence of evidence to the contrary, a decisive factor precluding a finding that the proprietor consented to a putting on the market in the EEA within the meaning of Article 7(1) of Directive 89/104.
46. As the wording of Article 13(1) of Regulation No 40/94 is, in essence, identical to that of Article 7(1) of Directive 89/104, except for the definition of the territory in which the good are to be put on the market, a point which is however irrelevant to a situation such as that in the main proceedings, and as there are no other contextual factors or factors linked to the purpose of the provisions requiring them to be interpreted differently, the interpretation in this judgment of Article 7(1) of Directive 89/104 for the purpose of replying to the question for a preliminary ruling referred applies equally for Article 13(1) of Regulation No 40/94.
48. In circumstances such as those of the main proceedings, where ‘perfume testers’ are made available, without transfer of ownership and with a prohibition on sale, to intermediaries who are contractually bound to the trade mark proprietor for the purpose of allowing their customers to test the contents, where the trade mark proprietor may at any time recall those goods and where the presentation of the goods is clearly distinguishable from that of the bottles of perfume normally made available to the intermediaries by the trade mark proprietor, the fact that those testers are bottles of perfume which bear not only the word ‘Demonstration’ but also the statement ‘Not for Sale’ precludes, in the absence of any evidence to the contrary, which it is for the national court to assess, a finding that the trade mark proprietor impliedly consented to putting them on the market.
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