Court of Justice 03-12-1981 ECLI:EU:C:1981:291

First question

The plaintiff in the main proceedings points out in the first place that, in its previous case-law relating to the limitation of national trademark rights, which are covered by Article 36 of the EEC Treaty, in relation to the principle of freedom of trade, the Court of Justice relied on the finding of the national court in question that, under the applicable national legislation all the elements of a trademark infringement existed. In the statement of the grounds on which its order making a reference was based, the Landgericht Hamburg held that the form adopted by the defendant for repackaging the imported trademarked article constituted an infringement of the German trademark right of which the plaintiff is the proprietor.

Subsequently, the plaintiff contends that, in the judgment of 23 May 1978 delivered in Case 102/77 {Hoffmann-La Roche v Centrafarm [1978] ECR 1139) the Court has already answered the first question to the effect that the proprietor of a trade mark which is protected in two Member States at the same time is justified by virtue of the first sentence of Article 36 of the EEC Treaty in taking measures to prevent a product, to which the trade mark has lawfully been affixed in one of those States, from being placed on the market in the other Member State after being placed in a new packaging to which the trade mark has been affixed by a third party.

In so far as the plaintiff's protected trade mark is affixed to the defendant's trademarked article in a manner which, from the technical point of view, differs from that described in Case 102/77, the Court of Justice is bound by the national court's finding that that variation likewise constitutes an infringement of the national trademark law. Moreover, the technical details of the repackaging method used by the defendant do not provide grounds for a different interpretation of Article 36 of the Treaty.

Accordingly, the first question raised by the Landgericht should be answered in the affirmative.

On a more general level, the plaintiff in the main proceedings also draws attention to the importance which the Court attributed in its judgments in Case 102/77 (cited above) and in Case 3/78 (Centrafann v American Home Products [1978] ECR 1823) to the consumer's confidence that the goods purchased have not been subjected to any interference after being marketed by the manufacturer. That confidence, which is an aspect of the guarantee of origin deriving from the trade mark, is part of the specific subject-matter of the trademark right. It was precisely for that reason that the Court concluded that the trademark proprietor was entitled to prevent his mark from being affixed to a repackaged article.

Accordingly, the plaintiff maintains that the form in which the manufacturer puts a trademarked article on the market is characterized by the affixing of a trade mark. The consumer associates the mark, and therefore his confidence, with that form.

Moreover, the presentation of the packaging of pharmaceutical products, in particular the insertion of a set of essential instructions, is the subject of rules in all the Member States. In that connection the plaintiff emphasizes the risks inherent in repackaging by third parties.

It states that, for those reasons, it is impossible, from a legal point of view, to separate a pharmaceutical product from its packaging. Modification of the outside packaging of the product constitutes an action which affects the original condition of the trademarked article, which is altered in a manner affecting the aspects both of public security and the guarantee of origin.

The defendant in the main proceedings points out in the first place that the first sentence of Article 36 of the Treaty authorizes only restrictions on the free movement of goods which are justified on the grounds of protection of the specific subject-matter of industrial and commercial property rights. According to the case-law of the Court, the specific subject-matter of the trademark right is in particular to ensure that the proprietor of the trade mark has the exclusive right to use it when the product is first put into circulation. Having regard to the main function of a trade mark, which is to guarantee the origin of the product bearing it, only the proprietor of the trade mark is entitled to identify the product by affixing the mark.

Although the first sentence of Article 36 thus respects national laws in so far as they confer on the proprietor an exclusive right to affix the mark, the question submitted for a preliminary ruling raises another problem, namely that, in the opinion of the national court, German trademark law authorizes the proprietor of a trade mark to prevent the marketing of a product to which he has affixed his trade mark by a third party who has changed the packaging and made the trade mark affixed by the proprietor thereof visible through the new packaging. In this case, it is a question of determining whether the specific subject-matter of the trademark right covers, in addition to the proprietor's exclusive right to affix his trade mark, an exclusive right, which may or may not be conferred under a national legal system, to ensure that the mark which he has affixed to the product is visible.

The defendant in the main proceedings contends that the grant of such an exclusive right is embodied in individual provisions of the national law which are unconnected with the specific subject-matter of the trademark right. That subject-matter may only be defined on the basis of what is regarded as the nature of the trademark right by legal opinion common to the countries of the Community.

To demonstrate the absence of common legal concepts in this field, the defendant draws attention on the one hand to the wide interpretation of the German law on trade marks which the Landgericht had to adopt in order to justify its position and on the other hand the fact that the Hanseatische Oberlandesgericht refrained from giving any decision on the question whether in this case there was an infringement of national trademark law. Furthermore, considerable differences exist between national legal concepts relating to ancillary aspects of trademark protection.

Finally, the defendant in the main proceedings contends that consideration should not be given merely to the extent to which the various national laws are in harmony; on the contrary, the starting point must be the objectives of Community law, in accordance with which a negative answer must be given to the question raised. In this respect, it refers to the opinion of Mr Advocate General Capotorti in Case 102/77 {Hoffmann-La Roche v Centrafarm), to the effect that “even if one or more domestic legal systems provide protection for certain ancillary functions of a trade mark it nevertheless remains true that in the Community system such protection can be held permissible only in so far as it is not at variance with the full observance of the principle of the free movement of goods ... National legislation, learned writing and case-law ... clearly proceeded from the specific requirements of their respective national markets; in the present case, however, regard must be had for the dictates of the common market and for the legal requirements of the EEC Treaty” ([1978] ECR at p. 1175).

The Commission of the European Communities points out in the first place that the way in which the first question is formulated does not make it fully clear that the blister-strip packaging had the trade mark affixed to it by the proprietor thereof and was not altered by the importer.

It then goes on to place the question raised within the context of the relevant case-law.

The specific subject-matter of the trademark right is in particular to ensure the proprietor's exclusive right to use the mark, when a product is first put info circulation, and to protect him against any competitors who might abuse the position and reputation of the mark by selling products wrongly bearing it (cf. judgment of 10 October 1978 in Case 3/78, Centrafarm v American Home Products, cited above, paragraph 11 of the decision). Where it is to be determined whether the conduct of a third party jeopardizes the existence of the trademark right, that is to say, whether it affects the substance thereof, the exact scope of the trademark right must be defined. In that respect the Court takes into account the essential function of the trade mark, namely the guarantee to the consumer or final user of the identity of the origin of the trademarked product (cf. judgments of 31 October 1974 in Case 16/74, Centrafarm v Winthrop [1974] ECR 1183, of 22 June 1976 in Case 119/75, Terrapin v Terranova [1976] ECR 1039, of 23 May 1978 in Case 102/77, cited above, and of 10 October 1978 in Case 3/78, also cited above). It is an essential feature of the guarantee of origin that only the proprietor of the trade mark may affix it to the product. That guarantee implies that the consumer may be certain that the original condition of the product has not been altered by a third party without the consent of the proprietor of the trade mark.

In this case, the trade mark was neither removed nor altered by Eurim-Pharm GmbH.

According to the Commission, the argument of the plaintiff in the main proceedings that the trademark right relates to the totality of the packaging and its content marketed in the Federal Republic of Germany as a unit in itself is not valid under Community law. It considers that the essential function of the trade mark, namely the guarantee of identity or origin, relates to the trademarked product and not to its packaging. Where that trade mark appears on the immediate wrapping of the product, the protection provided by the trade mark does not extend to a further external packaging. The word “Vibramycin” appearing on the blister strip immediately surrounding the medicinal capsules conveys the following meaning: “The product contained in this packaging has been manufactured by the proprietor of the mark ‘Vibramycin’ or has been stamped with that mark with his consent.” Accordingly, a third party who does no more than present the product as trademarked by the proprietor but in a different packaging does not affix the trade mark to the product. To that extent, the circumstances giving rise to this case are not comparable with the facts of Cases 3/78 and 102/77 cited above.

Since the essential function of the trade mark has not been encroached upon by the defendant's practice, the trademark right of the plaintiff in the main proceedings has not been affected. Consequently, the first sentence of Article 36 of the Treaty may not be relied upon to justify a prohibition on the marketing in the Federal Republic of Germany of the pharmaceutical products imported from the United Kingdom.

Second question

The plaintiff in the main proceedings maintains that in Case 3/78 (cited above) the Court has already answered the second question, holding that there maybe a disguised restriction on trade if it is established that the practice of using different marks for a single product is adopted by the proprietor with the aim of artificially partitioning the markets.

However, the Court also declared that it might be lawful for the manufacturer of a product to use different marks for the same product in different Member States (paragraph 20 of the decision).

The considerations expounded in the judgment cited above are not confined to the use of separate marks but also to the use of packagings of different sizes. In this case, that practice is in fact adopted for legitimate motives, namely the practices followed in prescribing medicaments which differ considerably from one country to another. In Case 102/77 (cited above), the Court has moreover already recognized that it is lawful to offer for sale packagings of different sizes conforming to the requirements of the national market concerned.

The defendant in the main proceedings points out that the second sentence of Article 36 gives effect to two fundamental principles of the Treaty, namely the general prohibition on discrimination contained in Article 7 and the principle of unity of the market contained in Article 2. In the same way as Article 7 refers to all objective discrimination practised on grounds of nationality, the specific implementation of the second sentence of Article 36 does not take into account the motives of the party taking the action.

Furthermore, it is not appropriate to draw a distinction on the one hand between disguised restrictions on trade which are objective and which are the result of for example measures for the protection of health or national treasures and, on the other hand, disguised restrictions which may also be intentional and may result in particular from measures protecting industrial property.

It is evident from the judgment in Case 102/77 (cited above) that the Court did not consider that any special factor of subjective intention was necessary. Although in Case 3/78 (cited above) the Court indicated that the subjective aim on the part of the proprietor of the trade mark to partition the markets was a circumstance relevant to its decision, in so doing it was examining an individual case and for precisely that reason the same approach cannot be transposed to other cases. Moreover, the judgment delivered in Case 3/78 does not give the slightest indication that the Court wished to make a subsequent rectification to the judgment in Case 102/77.

Finally, the defendant in the main proceedings points out that the Oberlandesgericht Karlsruhe, in a judgment of 7 September 1978 (GRUR 1978, 712-715), and the Hanseatische Oberlandesgericht, in its judgment of 24 January 1980, concur in their opinion that it is sufficient, to establish the existence of a disguised restriction on trade between Member States within the meaning of the second sentence of Article 36, for the exercise of the trademark right by its proprietor to lead objectively to the partitioning of the markets.

The Commission is of the opinion that the second question arises only if an affirmative answer is given to the first question, that is to say if the conduct of the defendant is in fact regarded as affecting the very existence of the trademark right in question.

In so far as it is appropriate to answer the second question, the Commission proposes the adoption of the solution put forward in the judgment in Case 102/77, with which this case is analogous inasmuch as a single trade mark is protected in two Member States for the benefit of the proprietor and in respect of the same product.

It states that the facts in those two cases are to be distinguished from those in Case 3/78, in which the proprietor owned different marks in the various Member States for the same product. In such a case it seems justified not to take the view that the exercise of the trademark right constitutes a disguised restriction on trade on the sole ground that it contributes objectively to a partitioning of the markets.