1. This reference for a preliminary ruling concerns the interpretation of Articles 5 and 7 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).
2. The reference has been made in proceedings between Viking Gas A/S (‘Viking Gas’), the applicant in the main proceedings, and Kosan Gas A/S, formerly BP Gas A/S (‘Kosan Gas’), concerning Viking Gas’ practice of selling gas by refilling composite bottles of gas, the shape of which is protected as a three-dimensional trade mark, and exchanging them, in return for payment, for bottles previously purchased by consumers from Kosan Gas, which holds an exclusive license for their use and has affixed to the bottles its name and logo, which are protected as word and figurative marks. Legal context
3. Directive 89/104 has been repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (OJ 2008 L 299, p. 25), which entered into force on 28 November 2008. However, having regard to the time of the events, the dispute in the main proceedings is governed by Directive 89/104.
4. Article 5(1) to (3) of Directive 89/104 provided: ‘1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. … 3. The following, inter alia, may be prohibited under paragraphs l and 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; …’
5. Article 7 of Directive 89/104, headed ‘Exhaustion of the rights conferred by a trade mark’, provided: ‘1. The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.’
6. In accordance with Article 65(2) of the Agreement on the European Economic Area of 2 May 1992, read in conjunction with Annex XVII, Point 4, to that agreement, the original version of Article 7(1) of Directive 89/104 was amended for the purposes of that agreement, with the expression ‘in the Community’ being replaced by the words ‘in a Contracting Party’.
7. Article 8(1) of Directive 89/104 provided: ‘A trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Member State concerned. A license may be exclusive or non-exclusive.’ The dispute in the main proceedings and the questions referred for a preliminary ruling
8. Kosan Gas produces and sells bottled gas to private and commercial customers. Since 2001, Kosan Gas has marketed bottled gas in Denmark in ‘composite’ bottles (lightweight bottles). The particular shape of those bottles is registered as a three-dimensional Community trade mark and a three-dimensional Danish trade mark for gaseous fuels and containers used for liquid fuels. The validity and scope of those registrations are not in dispute.
9. The composite bottles are used by Kosan Gas in accordance with a sole distribution agreement entered into with the Norwegian producer of the bottle, which confers on Kosan Gas an exclusive licence to use those bottles as a shape trade mark in Denmark and the right to take legal proceedings against infringements of the mark. Kosan Gas affixes to those bottles its name and logo, which are registered both as Community word and figurative marks inter alia for gas.
10. On first purchase of a composite bottle filled with gas from one of Kosan Gas’ dealers, the consumer also pays for the bottle, which thus becomes the consumer’s property. Kosan Gas also refills empty composite bottles. A consumer may therefore exchange, at one of Kosan Gas’ dealers, an empty composite bottle for a new composite bottle filled by Kosan Gas and will pay only the price of the gas purchased.
11. Viking Gas, which sells but does not itself produce gas, has one filling station in Denmark, from which composite bottles are dispatched, after being filled with gas, to independent dealers. Viking Gas attaches to those bottles an adhesive label bearing its name and the filling station number together with a further adhesive label providing inter alia information as required by law on the filling station and the contents of the bottles. The word and figurative marks of Kosan Gas on those bottles are neither removed nor covered. A consumer can go to a dealer cooperating with Viking Gas and, on payment for the gas, get an empty gas bottle exchanged for a similar one filled by Viking Gas.
12. Kosan Gas has also sold gas using bottles other than composite bottles as containers, namely steel gas canisters of the same type as those used by most of the operators on the market (uniform, yellow steel canisters in a variety of sizes). Those canisters, previously used by Kosan Gas, are not registered as shape trade marks, but, like the composite bottles, bear the word and figurative marks of that undertaking. Viking Gas submits that Kosan Gas has for many years accepted, and continues to accept, the fact that other firms refill those uniform canisters to sell their gas although they bear the name and logo of Kosan Gas.
13. Following an action for infringement brought by Kosan Gas, the fogedret in Viborg (Bailiff’s Court, Viborg) prohibited Viking Gas, by order of 6 December 2005, from selling gas by filling Kosan Gas’ composite bottles. That order was confirmed by judgment of the Sø- og Handelsretten (Maritime and Commercial Court) of 21 December 2006, which holds inter alia that Viking Gas is infringing the trade mark rights of Kosan Gas by filling and marketing composite bottles in Denmark and prohibits Viking Gas from using marks of which Kosan Gas is the proprietor. Viking Gas was also ordered to pay DKK 75 000 to Kosan Gas as consideration for the use of those marks.
14. Viking Gas brought an appeal against that judgment before the Højesteret (Danish Supreme Court), which decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling: ‘(1) Is Article 5, in conjunction with Article 7, of [Directive 89/104] to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: (a) Company A sells gas in so-called ‘composite’ bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and a Community trade mark. Company A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark; (b) On first purchase of a composite bottle filled with gas from one of company A’s dealers the consumer also pays for the bottle, which thus becomes the consumer’s property; (c) Company A refills the composite bottles by a procedure under which the consumer goes to one of company A’s dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by company A; (d) Company B’s business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in point (a), by a procedure under which consumers go to a dealer associated with company B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by company B; (e) When the composite bottles in question are filled with gas by company B, adhesive labels are attached to the bottles indicating that the filling was undertaken by company B? (2) If it may be assumed that consumers will generally receive the impression that there is an association between companies A and B, is this to be regarded as significant for the purpose of answering Question 1? (3) If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of company A, which is still visible irrespective of any adhesive labels affixed by company B? (4) If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature company A’s word and/or figurative mark, company A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? (5) If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to company B directly and there: (a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by company B, or (b) on payment, has a composite bottle which he has brought filled with gas?’ Consideration of the questions referred
15. By its questions, which should be dealt with together, the national court asks, in essence, whether and, if so, in which circumstances, the holder of an exclusive licence for the use of composite gas bottles intended for re-use, the shape of which is protected as a three-dimensional mark and to which the holder has affixed its own name and logo that are registered as word and figurative marks, may prevent, pursuant to Articles 5 and 7 of Directive 89/104, those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being exchanged by a third party, on payment, for composite bottles filled with gas which does not come from the holder of that licence. Observations submitted to the Court
16. According to Viking Gas, in circumstances such as those at issue in the main proceedings, the refilling and exchanging of composite bottles may not be prohibited pursuant to Articles 5 and 7 of Directive 89/104. Kosan Gas and the Italian Republic express the contrary opinion. The European Commission takes the view that it is essentially a question of ascertaining whether there is, in the main proceedings, a likelihood of confusion in the sense that the consumer may believe that the gas contained in a bottle filled by Viking Gas comes from Kosan Gas or that there is a commercial connection between those undertakings, which it is for the national court to establish.
17. Viking Gas states that the consumer acquires the composite bottle at the time of the first purchase, which has the consequence that Kosan Gas’ trade mark right is exhausted. Consequently, the consumer is entitled to use that bottle, which is indeed specifically intended to be filled with gas, freely for refills. The rights conferred on the proprietor of a mark cannot be extended to the point that the purchaser of a product bearing that mark is prevented from using that product for the purposes for which it has been placed on the market. It is of little importance, in that regard, whether the consumer has the composite bottles which he has purchased refilled by going directly to Viking Gas or by exchanging an empty composite bottle for a similar full bottle at one of the dealers of Viking Gas. Given that, in both of those cases, it is clear to purchasers that, first, the composite bottles are second-hand goods and, secondly, the gas comes not from Kosan Gas, but Viking Gas - which is indicated on the bottles by the adhesive labels attached - the resale of bottles filled by Viking Gas does not infringe the trade mark rights of Kosan Gas.
18. Viking Gas submits that types of gas bottles other than composite bottles are frequently refilled by traders other than those who have marketed those types of bottles. Kosan Gas cannot put an end to that practice by introducing a gas bottle of another type onto the market. The acquisition of a trade mark right cannot have the objective of ring-fencing markets so that the proprietor of that mark can obtain an undue competitive advantage and implement an unjustified difference in price, and that must also be taken into consideration in interpreting the rules relating to the exhaustion of the right conferred by the mark. Viking Gas states, in that connection, that Kosan Gas is using the non-exhaustion of the right conferred by the mark in question to achieve an artificial division of the market for bottled gas, which is proved by the fact that that undertaking currently sells the gas in a composite bottle at a price more than 20% higher than that of gas in a standard steel canister, without there being any production or distribution-related factors capable of justifying such a difference in price.
19. Kosan Gas takes the view that the case in the main proceedings concerns identical goods and marks, with the result that there is infringement by virtue of that fact alone. In any event, there is a strong likelihood of confusion since the labelling of the composite bottles carried out by Viking Gas is very unobtrusive.
20. Kosan Gas submits that the rule on the e xhaustion of the rights conferred by the mark does not authorise Viking Gas to fill and sell its own gas in composite bottles protected by a mark of which it is not the proprietor. That rule implies only that Kosan Gas may not prevent the resale of the composite bottles which it fills and markets. The exhaustion of the right in question cannot relate to reusable packaging, as the packaging is not in itself a product, the product in the present case being the gas. Even if the reverse were true, the exhaustion could relate only to the packaging as such with the result that it could be distributed without contents. Furthermore, the replacement of a product covered by a mark, which is intended for use by a consumer, constitutes a change in that product for the purposes of Article 7(2) of Directive 89/104, which the proprietor of that mark may oppose even after having put the product on the market.
21. The Italian Republic notes the risks stemming from the protection of containers as three-dimensional marks and the public interest in keeping them available in order to promote competition and protect consumers. However, that interest is protected by Article 3 of Directive 89/104, which lists the grounds for refusal or invalidity of marks, and cannot contribute towards a definition of the limits and scope of the right conferred by the mark once it has been validly registered. Since the validity of the registration of the composite bottle as a mark is not in dispute, it must be regarded as established that the shape of the bottle has a distinctive function in relation to the product, which implies that the sale of the same product in the same shape by a third party usurps the distinctive function of the mark.
22. The principle of the exhaustion of the rights conferred by the mark, which refers only to successive resales of the product in respect of which the exhaustion of the mark has occurred, cannot be relied upon against that interpretation. Even if the opposite view is used as a starting point, the trade mark rights are nevertheless not exhausted in the main proceedings given that the circumstances described by the national court are covered by the derogation provided for in Article 7(2) of Directive 89/104. The fact that Viking Gas fills the bottles with its own gas involves the risk of an impairment of or change to the ‘product-bottle’. Kosan Gas has an obvious interest in those composite bottles being filled by its authorised dealers in order to be able to retain control over the quality of the product sold since any defect in that product may affect the reputation of the mark.
23. The Commission is of the opinion that the determinative element in the present case is whether the consumer who goes to Viking Gas to have his empty composite bottle filled is in a position to understand without difficulty, on the basis of the labelling alone, that the gas which he has just bought comes from Viking Gas and that there is no commercial connection between that undertaking and Kosan Gas. It states that the situation in the main proceedings is covered by Article 5(1)(a) of Directive 89/104, which protects, according to the case-law of the Court, all the functions of the mark. However, there is nothing to indicate that functions other than those to guarantee the origin of the product are undermined by the use at issue.
24. As regards the issue of the exhaustion of the rights conferred by the mark, the Commission makes a distinction between, first, the use of a composite bottle filled with gas by Kosan Gas or, as the case may be, of an empty composite bottle and, secondly, the use of that bottle filled with gas from another undertaking. The first type of use cannot be prohibited by the proprietor of the shape trade mark given that the rights conferred by that mark have been exhausted with the sale of the composite bottle in so far as that sale made it possible to realise the economic value of the bottle. As regards the second type of use, account must be taken of the fact that the product covered by the mark, namely the gas, has already been consumed and has been replaced, without the consent of the proprietor of the trade mark, by another product which does not come from the proprietor of that mark. In such a case, the conditions set out in Article 7(1) of Directive 89/104 are not met because the mark does not serve to guarantee the origin of the product which it is supposed to cover. Findings of the Court
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).
28. In the case in the main proceedings, it is common ground that the composite bottles, the filling and exchange of which by Viking Gas is at issue, were put on the market in the EEA by Kosan Gas, which holds an exclusive licence for the use in Denmark of the three-dimensional mark constituted by the shape of those bottles and is the proprietor of the word and figurative marks affixed to them.
29. Kosan Gas, the Italian Republic and the Commission submit however that Article 7(1) of Directive 89/104 is to be interpreted as meaning that that putting on the market exhausts only the right of the proprietor or of a licensee to prohibit the further commercialisation of bottles which are still filled with the original gas or are empty, but does not authorise third parties to fill, for commercial purposes and with their own gas, those same bottles. Kosan Gas submits in particular that the exhaustion of the trade mark rights cannot relate to the packaging of the product.
30. In that regard, it must be pointed out that the composite bottles, which are intended for re-use a number of times, do not constitute mere packaging of the original product, but have an independent economic value and must be regarded as goods in themselves. When the consumer first purchases such a bottle filled with gas from one of Kosan Gas’ dealers, he must pay not only for that gas, but also for the composite bottle, the price of which is higher than that of standard steel gas canisters, in particular on account of their specific technical characteristics, and than the price of the gas which they contain.
31. In those circumstances, a balance must be struck between, on the one hand, the legitimate interest on the part of the licensee of the right to the trade mark constituted by the shape of the composite bottle and the proprietor of the marks affixed to that bottle in profiting from the rights attached to those marks and, on the other, the legitimate interests of purchasers of those bottles, in particular the interest in fully enjoying their property rights in those bottles, and the general interest in maintaining undistorted competition.
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).
33. As regards the interests of purchasers of composite bottles, it is common ground that they may not fully enjoy their property rights in those bottles if those rights are restricted by the related trade mark rights even after the sale of those bottles by the proprietor or with his consent. As the Advocate General stated at point 66 of her Opinion, those purchasers would no longer be free to exercise those property rights, but would be tied to a single gas supplier for the subsequent refilling of those bottles.
34. Lastly, to allow the licensee of the trade mark right constituted by the shape of the composite bottle and proprietor of the marks affixed to that bottle to prevent, on the basis of the rights relating to those marks, the bottles from being refilled would unduly reduce competition on the downstream market for the refilling of gas bottles, and would even create the risk of that market’s being closed off if the licensee and proprietor were to succeed in imposing its bottle because of its specific technical characteristics, the protection of which is not the purpose of trade mark law. That risk is, moreover, increased by virtue of the fact that the cost of the composite bottle is much more than the gas and that the purchaser, in order to regain a free choice of gas supplier, would have to forgo the initial outlay made in purchasing the bottle, the recouping of which requires the bottle to be reused a sufficient number of times.
35. It follows from the foregoing that the sale of the composite bottle exhausts the rights that the licensee of the right to the trade mark constituted by the shape of the composite bottle and proprietor of the marks affixed to that bottle derives from those marks and transfers to the purchaser the right to use that bottle freely, including the right to exchange it or have it refilled, once the original gas has been consumed, by an undertaking of his choice, that is to say, not only by that licensee and proprietor, but also by one of its competitors. The corollary of that right on the part of the purchaser is the right of those competitors, within the limits set out in Article 7(2) of Directive 89/104, to refill and exchange the empty bottles.
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).
38. Although it is the task of the national court to assess whether, having regard to the circumstances of the case in the main proceedings, such a legitimate reason exists, it is however necessary to provide that court with some guidance in respect of that assessment, in particular as regards the specific matters on which it seeks a ruling from the Court.
39. In that connection, it must be stated that, in order to answer the question whether the commercialisation of the composite bottles refilled by Viking Gas is carried out in such a way as to give the impression that there is a commercial connection between that undertaking and Kosan Gas which would entitle Kosan Gas to oppose that commercialisation, it is necessary to take into account the labelling of those bottles and the circumstances in which they are exchanged.
40. The labelling of the composite bottles and the circumstances in which they are exchanged must not lead the average consumer who is reasonably well informed and reasonably observant and circumspect to consider that there is a connection between the two undertakings at issue in the main proceedings or that the gas used to refill those bottles comes from Kosan Gas. In order to assess whether such an erroneous impression is precluded, it is necessary to take into account the practices in that sector and, in particular, whether consumers are accustomed to the gas bottles being filled by other dealers. Furthermore, it appears to be reasonable to assume that a consumer who goes directly to Viking Gas either to exchange his empty gas bottle for a full bottle or to have his own bottle refilled is more readily in a position to be aware that there is no connection between Viking Gas and Kosan Gas.
41. As regards the fact that the composite bottles bear word and figurative marks made up of the name and logo of Kosan Gas which remain, according to the findings of the national court, visible in spite of the labelling affixed by Viking Gas to those bottles, it must be pointed out that this constitutes a relevant factor in so far as it seems to rule out that labelling from altering the condition of the bottles by masking their origin.
42. It is apparent from the foregoing that the answer to the questions referred is that Articles 5 and 7 of Directive 89/104 must be interpreted as meaning that the holder of an exclusive licence for the use of composite gas bottles intended for re‑use, the shape of which is protected as a three-dimensional mark and to which the holder has affixed its own name and logo that are registered both as word and figurative marks, may not prevent those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being exchanged by a third party, on payment, for composite bottles filled with gas which does not come from the holder of that licence, unless that holder is able to rely on a proper reason for the purposes of Article 7(2) of Directive 89/104. Costs
43. Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.