CJEU: Exhaustion - No valid reason to oppose further commercialisation repackaged and relabelled SodaStream bottles29-01-2023 Print this page
Exhaustion. No valid reason for the trade mark proprietor to oppose further marketing of goods intended to be reused and refilled several times when the reseller has replaced the original trade mark with new labelling while leaving the original trade mark visible on those goods, provided that the new labelling does not give consumers the false impression that there is an economic connection between the reseller and the trade mark proprietor. The risk of confusion must be assessed globally on the basis of indications on the goods and their new labelling, as well as against the background of distribution practices in the sector concerned and the extent to which consumers are aware of these practice.
In Case C-197/21, facts via MinBuZa (own translation)
This case concerns whether a person who refills and sells CO2 cylinders (hereinafter CO2 bottles) put on the market by a trade mark proprietor or with its consent has the right to remove the trade mark proprietor's labels from those bottles and replace them with its own labels. SodaStream sells Sodastream-branded sparkling water drink devices. The sales packaging includes a refillable aluminium CO2 bottle, with the trade mark SODASTREAM or SODACLUB engraved on it. The CO2 bottles are also labelled with the trade mark SODASTREAM or SODA-CLUB. Since June 2016, CO2 bottles filled in Finland, which fit not only their own sparkling water appliances but also those of SodaStream, among others, have been sold and commercialised by MySoda Oy. Some of these bottles involve refilled CO2 bottles originally put on the market by SodaStream. After receiving, through the distributor, the CO2 bottles returned empty from SodaStream by consumers, MySoda Oy first replaced the SodaStream label on them. After refilling the bottles, it applied its own label on them in such a way that the engravings on the bottles (SODASTREAM or SODA-CLUB) remained visible. SodaStream claims that MySoda Oy infringes its trade marks.
‘(1) Do the so-called Bristol-Myers Squibb criteria developed in the Court of Justice’s case-law on repackaging and relabelling in cases of parallel imports, and in particular the condition of “necessity” also apply in the case of repackaging or relabelling of goods, which have been put on the market in a Member State by the trade mark proprietor or with its consent, for the purposes of resale in the same Member State?
(2) Where the trade mark proprietor has affixed its trade mark to the cylinder, both on the label and engraved on the neck of the cylinder, when putting a cylinder containing carbon dioxide on the market, do the Bristol-Myers Squibb criteria referred to above, and in particular the condition of “necessity” apply when a third party refills the cylinder with carbon dioxide for the purposes of resale, removes the original label and replaces it with a label bearing its own logo, while, at the same time, the trade mark of the person that put the cylinder on the market continues to be visible in the engraving on the neck of the cylinder?
(3) In the situation described above, can the view be taken that the removal and replacement of the label bearing the trade mark undermines, in principle, the function of the trade mark as an indication of the origin of the cylinder, or is it of significance, with regard to the applicability of the conditions for repackaging and relabelling, that:
– it is to be assumed that the relevant public should perceive the label as referring exclusively to the origin of the carbon dioxide contained in the cylinder (and thus to the person who has refilled the cylinder); or
– it is to be assumed that the relevant public should perceive the label as also referring, at least in part, to the origin of the cylinder?
(4) If the removal and replacement of the label affixed on carbon dioxide cylinders is to be assessed on the basis of the condition of necessity, can the fact that the labels affixed to the cylinders put on the market by the trade mark proprietor have been accidentally damaged or become detached or have been removed and replaced by a person’s previous refilling constitute a circumstance on the basis of which the regular replacement of the labels by the label of the person who refilled the cylinders is to be regarded as being necessary for putting the refilled cylinders on the market?’
The Court rules:
Article 15(2) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark and Article 15(2) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark who has put on the market, in a Member State, goods bearing that mark and intended to be reused and refilled numerous times, is not entitled, under those provisions, to oppose subsequent commercialisation of those goods, in that Member State, by a reseller who has refilled them and has replaced the label on which the original mark appeared by another label, while leaving visible the original mark on those goods, unless that new labelling creates a false impression, in the minds of consumers, that there is an economic connection between the reseller and the trade mark proprietor. That likelihood of confusion must be assessed globally in the light of the information appearing on the product and its new labelling and having regard to the distribution practices of the sector concerned and the level of knowledge that consumers have of those practices.