Hoffmann-La Roche & Co. AG v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mbH.
Date: 1978-05-23
6AS A RESULT OF THE PROVISIONS IN THE TREATY RELATING TO THE FREE MOVEMENT OF GOODS , AND IN PARTICULAR ARTICLE 30 , QUANTITATIVE RESTRICTIONS ON IMPORTS AND ALL MEASURES HAVING EQUIVALENT EFFECT ARE PROHIBITED BETWEEN MEMBER STATES . PURSUANT TO ARTICLE 36 THOSE PROVISIONS NEVERTHELESS DO NOT PRECLUDE PROHIBITIONS OR RESTRICTIONS ON IMPORTS JUSTIFIED ON GROUNDS OF THE PROTECTION OF INDUSTRIAL AND COMMERCIAL PROPERTY . HOWEVER , IT IS CLEAR FROM THAT SAME ARTICLE , IN PARTICULAR ITS SECOND SENTENCE , AS WELL AS FROM THE CONTEXT , THAT WHILST THE TREATY DOES NOT AFFECT THE EXISTENCE OF RIGHTS RECOGNIZED BY THE LAWS OF A MEMBER STATE IN MATTERS OF INDUSTRIAL AND COMMERCIAL PROPERTY , YET THE EXERCISE OF THOSE RIGHTS MAY NEVERTHELESS , DEPENDING ON THE CIRCUMSTANCES , BE RESTRICTED BY THE PROHIBITIONS CONTAINED IN THE TREATY . INASMUCH AS IT CREATES AN EXCEPTION TO ONE OF THE FUNDAMENTAL PRINCIPLES OF THE COMMON MARKET , ARTICLE 36 IN FACT ADMITS OF DEROGATIONS FROM THE FREE MOVEMENT OF GOODS ONLY TO THE EXTENT TO WHICH SUCH EXCEPTIONS ARE JUSTIFIED FOR THE PURPOSE OF SAFEGUARDING THE RIGHTS WHICH CONSTITUTE THE SPECIFIC SUBJECT-MATTER OF THAT PROPERTY .
7IN RELATION TO TRADE-MARKS , THE SPECIFIC SUBJECT-MATTER IS IN PARTICULAR TO GUARANTEE TO THE PROPRIETOR OF THE TRADE-MARK THAT HE HAS THE EXCLUSIVE RIGHT TO USE THAT TRADE-MARK FOR THE PURPOSE OF PUTTING A PRODUCT INTO CIRCULATION FOR THE FIRST TIME AND THEREFORE TO PROTECT HIM AGAINST COMPETITORS WISHING TO TAKE ADVANTAGE OF THE STATUS AND REPUTATION OF THE TRADE-MARK BY SELLING PRODUCTS ILLEGALLY BEARING THAT TRADE-MARK . IN ORDER TO ANSWER THE QUESTION WHETHER THAT EXCLUSIVE RIGHT INVOLVES THE RIGHT TO PREVENT THE TRADE-MARK BEING AFFIXED BY A THIRD PERSON AFTER THE PRODUCT HAS BEEN REPACKAGED , REGARD MUST BE HAD TO THE ESSENTIAL FUNCTION OF THE TRADE-MARK , WHICH IS TO GUARANTEE THE IDENTITY OF THE ORIGIN OF THE TRADE-MARKED PRODUCT TO THE CONSUMER OR ULTIMATE USER , BY ENABLING HIM WITHOUT ANY POSSIBILITY OF CONFUSION TO DISTINGUISH THAT PRODUCT FROM PRODUCTS WHICH HAVE ANOTHER ORIGIN . THIS GUARANTEE OF ORIGIN MEANS THAT THE CONSUMER OR ULTIMATE USER CAN BE CERTAIN THAT A TRADE-MARKED PRODUCT WHICH IS SOLD TO HIM HAS NOT BEEN SUBJECT AT A PREVIOUS STAGE OF MARKETING TO INTERFERENCE BY A THIRD PERSON , WITHOUT THE AUTHORIZATION OF THE PROPRIETOR OF THE TRADE-MARK , SUCH AS TO AFFECT THE ORIGINAL CONDITION OF THE PRODUCT . THE RIGHT ATTRIBUTED TO THE PROPRIETOR OF PREVENTING ANY USE OF THE TRADE-MARK WHICH IS LIKELY TO IMPAIR THE GUARANTEE OF ORIGIN SO UNDERSTOOD IS THEREFORE PART OF THE SPECIFIC SUBJECT-MATTER OF THE TRADE-MARK RIGHT .
8IT IS ACCORDINGLY JUSTIFIED UNDER THE FIRST SENTENCE OF ARTICLE 36 TO RECOGNIZE THAT THE PROPRIETOR OF A TRADE-MARK IS ENTITLED TO PREVENT AN IMPORTER OF A  TRADE-MARKED PRODUCT , FOLLOWING REPACKAGING OF THAT PRODUCT , FROM AFFIXING THE TRADE-MARK TO THE NEW PACKAGING WITHOUT THE AUTHORIZATION OF THE PROPRIETOR .
9IT IS , HOWEVER , NECESSARY TO CONSIDER WHETHER THE EXERCISE OF SUCH A RIGHT MAY CONSTITUTE A ' DISGUISED RESTRICTION ON TRADE BETWEEN MEMBER STATES '  WITHIN THE MEANING OF THE SECOND SENTENCE OF ARTICLE 36 . SUCH A RESTRICTION MIGHT ARISE , INTER ALIA , FROM THE PROPRIETOR OF THE TRADE-MARK PUTTING ONTO THE MARKET IN VARIOUS MEMBER STATES AN IDENTICAL PRODUCT IN VARIOUS PACKAGES WHILE AVAILING HIMSELF OF THE RIGHTS INHERENT IN THE TRADE-MARK TO PREVENT REPACKAGING BY A THIRD PERSON EVEN IF IT WERE DONE IN SUCH A WAY THAT THE IDENTITY OF ORIGIN OF THE TRADE-MARKED PRODUCT AND ITS ORIGINAL CONDITION COULD NOT BE AFFECTED . THE QUESTION , THEREFORE , IN THE PRESENT CASE IS WHETHER THE REPACKAGING OF A TRADE-MARKED PRODUCT SUCH AS THAT UNDERTAKEN BY CENTRAFARM IS CAPABLE OF AFFECTING THE ORIGINAL CONDITION OF THE PRODUCT .
10IN THIS RESPECT THE ANSWER MUST VARY ACCORDING TO THE CIRCUMSTANCES AND IN PARTICULAR ACCORDING TO THE NATURE OF THE PRODUCT AND THE METHOD OF REPACKAGING . DEPENDING ON THE NATURE OF THE PRODUCT REPACKAGING IN MANY CASES INEVITABLY AFFECTS ITS CONDITION , WHILE IN OTHERS REPACKAGING INVOLVES A MORE OR LESS OBVIOUS RISK THAT THE PRODUCT MIGHT BE INTERFERED WITH OR ITS ORIGINAL CONDITION OTHERWISE AFFECTED . NEVERTHELESS , IT IS POSSIBLE TO CONCEIVE OF THE REPACKAGING BEING UNDERTAKEN IN SUCH A WAY THAT THE ORIGINAL CONDITION OF THE PRODUCT CANNOT BE AFFECTED . 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 , OR WHERE THE REPACKAGING IS INSPECTED BY A PUBLIC AUTHORITY FOR THE PURPOSE OF ENSURING THAT THE PRODUCT IS NOT ADVERSELY AFFECTED . WHERE THE ESSENTIAL FUNCTION OF THE TRADE-MARK TO GUARANTEE THE ORIGIN OF THE PRODUCT IS THUS PROTECTED , THE EXERCISE OF HIS RIGHTS BY THE PROPRIETOR OF THE TRADE-MARK IN ORDER TO FETTER THE FREE MOVEMENT OF GOODS BETWEEN MEMBER STATES MAY CONSTITUTE A DISGUISED RESTRICTION WITHIN THE MEANING OF THE SECOND SENTENCE OF ARTICLE 36 OF THE TREATY IF IT IS ESTABLISHED THAT THE USE OF THE TRADE-MARK 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 .
12SINCE IT IS IN THE PROPRIETOR ' S INTEREST THAT THE CONSUMER SHOULD NOT BE MISLED AS TO THE ORIGIN OF THE PRODUCT , IT IS MOREOVER RIGHT TO ALLOW THE TRADER TO SELL THE IMPORTED PRODUCT WITH THE TRADE-MARK AFFIXED TO THE NEW PACKAGING ONLY ON CONDITION THAT HE GIVES THE PROPRIETOR OF THE MARK PRIOR NOTICE AND THAT HE STATES ON THE NEW PACKAGING THAT THE PRODUCT HAS BEEN REPACKAGED BY HIM .
14THE FIRST QUESTION MUST THEREFORE BE ANSWERED TO THE EFFECT THAT :
( A ) THE PROPRIETOR OF A TRADE-MARK RIGHT WHICH IS PROTECTED IN TWO MEMBER STATES AT THE SAME TIME IS JUSTIFIED PURSUANT TO 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 .

( B ) 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 TRADE-MARK 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 ; AND
- IT IS STATED ON THE NEW PACKAGING BY WHOM THE PRODUCT HAS BEEN REPACKAGED .

THE SECOND QUESTION