Viking Gas A/S v Kosan Gas A/S.
Date: 2011-07-14
25. 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 European Union (see, inter alia, Case C-127/09 Coty Prestige Lancaster Group  [2010] ECR I-0000, paragraph 27 and the case-law cited).
26. In particular, Article 5 of the directive confers on the trade mark proprietor exclusive rights which entitle him to prevent any third party, inter alia, from offering goods bearing the mark, 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 European Economic Area (EEA) by the proprietor himself or with his consent (see, inter alia, Case C-324/08 Makro Zelfbedieningsgroothandel and Others  [2009] ECR I-10019, paragraph 20 and the case-law cited).
27. 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 equivalent to the renunciation of the exclusive right, thus both constitute a decisive factor in the extinction of that right (see Coty Prestige Lancaster Group , paragraph 29 and the case-law cited).
32. As regards the interest of that licensee and proprietor in profiting from the rights attached to those marks, it must be pointed out that the sale of composite bottles allows it to realise the economic value of the marks relating to those bottles. The Court has already held that a sale which allows the realisation of the economic value of a mark exhausts the exclusive rights conferred by Directive 89/104 (see, inter alia, Case C‑16/03 Peak Holding  [2004] ECR I-11313, paragraph 40).
36. As regards those limits, it must be borne in mind that, pursuant to Article 7(2), the proprietor of a mark may, despite the putting on the market of goods bearing his mark, oppose further commercialisation of those goods where legitimate reasons for such opposition exist and especially where the condition of the goods is changed or impaired after they have been put on the market. According to settled case-law, the use of the adverb ‘especially’ in Article 7(2) of the directive indicates that alteration or impairment of the condition of goods bearing a mark is given only as an example of what may constitute legitimate reasons (see, inter alia, Case C-59/08 Copad  [2009] ECR I-3421, paragraph 54 and the case-law cited).
37. The Court has therefore already held that such a legitimate reason also exists when the use by a third party of a sign identical with, or similar to, a trade mark seriously damages the reputation of that mark or when that use is carried out in such a way as to give the impression that there is a commercial connection between the trade mark proprietor and that third party, and in particular that the third party is affiliated to the proprietor’s distribution network or that there is a special relationship between those two persons (see, to that effect, Case C‑558/08 Portakabin and Portakabin  [2010] ECR I-0000, paragraphs 79 and 80 and the case-law cited).