C-1/81

JUDGMENT OF 3. 12. 1981 — CASE 1/81

In Case 1/81

REFERENCE to the Court under Article 177 of the EEC Treaty by the Landgericht [Regional Court] Hamburg for a preliminary ruling in the action pending before that court between

PFIZER INC., New York, USA,

and

EURIM-PHARM GMBH, Piding/Bad Reichenhall, Federal Republic of Germany,

Facts and Issues

The facts of the case, the course of I — Facts and procedure the procedure and the observations submitted in accordance with Article 20 1. The plaintiff in the main proceed- of the Protocol on the Statute of the ings, Pfizer Inc., is a major American Court of Justice of the EEC may be manufacturer of pharmaceutical prod- summarized as follows: ucts, with subsidiaries in most of the

PFIZER v EURIM-PHARM

In its judgment of 10 August 1979 the Landgericht held that by marketing the In order to conform to German rules product in the packaging designed by it and practices, the defendant re-packages the defendant was infringing the national the blister strips of five capsules in trade-mark right of which the plaintiff folding boxes designed by it, without was the proprietor. In fact, from the changing the strip or its contents. On the point of view of the public, the name front side, the box has an opening with a 'Vibramycin', visible on the blister strips

JUDGMENT OF 3. 12. 1981 — CASE 1/81

packaging. The guarantee of origin, judgment was based, the Oberlan- which is the essential function of a trade desgericht explicitly left open the mark, particularly in the field of phar- question of infringement of the national maceutical products, and constitutes part trade-mark law, considering that the of the specific subject-matter of the exercise of the trade-mark right in the trade-mark right recognized by Com- case in point was excluded in any event munity law, relates to the whole item by Articles 30 and 26 of the EEC Treaty. offered for sale bearing the trade mark In fact, it was not open to the plaintiff to of the manufacturer.

Article 36. Such a restriction existed by Moreover, the Landgericht considered virtue of the fact that the packaging of that the plaintiff's reliance on national the pharmaceutical product intended for trade-mark law was not adverse to the British market was inappropriate for Community law. In fact, it may be seen the German market because of the from the judgments of the Court given different practices of German doctors in on 23 May 1978 in Case 102/77 prescribing medicinal products. (Hoffmann-La Roche v Centrafarm [1978] ECR 1139) and on 10 October 1978 in Case 3/78 (Centrafarm v American Home Products [1978] ECR 1823) that the application of the concepts of 'disguised Moreover, the appellate court considered restriction' and 'arbitrary discrimination' that the re-packaging carried out by the within the meaning of the second defendant did not detract from the sentence of Article 36 of the Treaty specific subject-matter of the trade-marlk presupposes the existence of a subjective right, namely its function by identifying factor in the form of the proprietor's use the origin of the product.

PFIZER v EURIM-PHARM

On the contrary, it was sufficient to show that the measures whose effect is to The defendant in the main proceedings partition the markets are attributable to before the Landgericht contended that the trade-mark proprietor and that they its practice of re-packaging did not are of an arbitrary nature. encroach upon the plaintiff's national trade-mark right because it left untouched the trade mark affixed by its proprietor to the product in question. 3. In the proceedings now pending Moreover, the specific subject-matter of before the Landgericht, the plaintiff the trade-mark right, referred to in the stated that, in the pharmaceuticals sector, first sentence of Article 36 of the EEC only the product together with its Treaty, did not confer the power which complete packaging accompanied by all the proprietor has under the national law the prescribed information may be to take action to stop the purchaser of a regarded as a marketable product. By product lawfully bearing the mark from substituting a new packaging for the 'showing' the mark after re-packaging original packaging and the ac- the product. companying information provided by the original manufacturer, a new marketable product is created which must be On the other hand, for the reasons designated as a trade-marked product if stated by the Hanseatische Oberlandes- a trade mark clearly appears on it. In this gericht, the plaintiff's exercise of his case, the defendant's expedient of trade-mark right was incompatible with allowing the trade mark 'Vibramycin' the second sentence of Article 36 of the printed on the blister strip to appear EEC Treaty. through an opening in the new packaging constituted an 'affixing' of the trade mark within the meaning of the In the statement of the reasons on which German law on trade marks. The trade- the order making the reference is based, mark proprietor's right to oppose any the Landgericht states that it adheres to unauthorized affixing of the trade mark the point of view expounded in the on his product was part of the specific judgment of 10 August 1979 to the effect subject-matter of the trade-mark right that the defendant is infringing the and therefore justified an exception such plaintiff's German trademark right.

JUDGMENT OF 3. 12. 1981 — CASE 1/81

or whether such exercise constitutes a connection with the marketing disguised restriction on trade between system which he employs with the Member States prohibited by the second ultimate objective of bringing about sentence of Article 36 of the Treaty. an artificial partitioning of the markets?' Consequently, the national court referred the following preliminary 4. The order of 5 November 1980 of questions to the Court of Justice: the Landgericht Hamburg making the reference was received at the Court ' 1 . Is the proprietor of a trade mark Registry on 7 January 1981. protected in his favour in Member State A entitled under Article 36 of In accordance with Article 20 of the the EEC Treaty, in reliance upon this Protocol on the Statute of the Court of right, to prevent an importer from Justice of the EEC, written observations buying from a subsidiary undertaking were submitted by the plaintiff in the of the proprietor of the trade mark main proceedings, Pfizer Inc., rep- medicinal preparations to which the resented by Helmut Droste and Rolf proprietor's trade mark has been Pietzcker and Partners, Rechtsanwälte, lawfully affixed with his consent in Hamburg, acting as Agents, by the Member State B of the Community defendant in the main proceedings, and which have been placed on the Eurim-Pharm GmbH, represented by H. market under that trade mark, from Pflüger, W. Schön, F. Pärn and Partners, re-packaging those products in Rechtsanwälte, Hamburg, acting as accordance with the different Agents, and by the Commission of the practices of doctors in prescribing European Communities, represented by medicaments prevailing in Member Mr Götz zur Hausen, a member of its State A and from placing those Legal Department, acting as Agent. products on the market in Member State A in an outer packaging Upon hearing the report of the Judge- designed by the importer on the Rapporteur and the views of the reverse side of which there is a Advocate General, the Court (First transparent window through which is Chamber) decided to open the oral visible the label of the proprietor of procedure without any preparatory the trade mark which is on the inquiry. reverse side of the blister strip directly surrounding the product?

relied on the finding of the national attention to the importance which the court in question that, under the Court attributed in its judgments in Case applicable national legislation all the 102/77 (cited above) and in Case 3/78 elements of a trade-mark infringement (Centrafann v American Home Products existed. In the statement of the grounds [1978] ECR 1823) to the consumer's on which its order making a reference confidence that the goods purchased was based, the Landgericht Hamburg have not been subjected to any inter- held that the form adopted by the ference after being marketed by the defendant for re-packaging the imported manufacturer.

the Court has already answered the first question to the effect that the proprietor Accordingly, the plaintiff maintains that of a trade mark which is protected in the form in which the manufacturer puts two Member States at the same time is a trade-marked article on the market is justified by virtue of the first sentence of characterized by the affixing of a trade Article 36 of the EEC Treaty in taking mark. The consumer associates the mark, measures to prevent a product, to which and therefore his confidence, with that the trade mark has lawfully been affixed form. in one of those States, from being placed on the market in the other Member State Moreover, the presentation of the after being placed in a new packaging to packaging of pharmaceutical products, in which the trade mark has been affixed by particular the insertion of a set of a third party. essential instructions, is the subject of

Moreover, its packaging. Modification of the the technical details of the re-packaging outside packaging of the product method used by the defendant do not constitutes an action which affects the provide grounds for a different in- original condition of the trade-marked terpretation of Article 36 of the Treaty. article, which is altered in a manner affecting the aspects both of public security and the guarantee of origin. Accordingly, the first question raised by the Landgericht should be answered in the affirmative.

JUDGMENT OF 3. 12. 1981 — CASE 1/81

mark law. Furthermore, considerable Although the first sentence of Article 36 differences exist between national legal thus respects national laws in so far as concepts relating to ancillary aspects of they confer on the proprietor an trade-mark protection. exclusive right to affix the mark, the question submitted for a preliminary ruling raises another problem, namely Finally, the defendant in the main that, in the opinion of the national court, proceedings contends that consideration German trade-mark law authorizes the should not be given merely to the extent proprietor of a trade mark to prevent the to which the various national laws are in marketing of a product to which he has harmony; on the contrary, the starting affixed his trade mark by a third party point must be the objectives of who has changed the packaging and Community law, in accordance with made the trade mark affixed by the which a negative answer must be given proprietor thereof visible through the to the question raised. In this respect, it

National The defendant in the main proceedings legislation, learned writing and case-law contends that the grant of such an . . . clearly proceeded from the specific exclusive right is embodied in individual requirements of their respective national provisions of the national law which are markets; in the present case, however, unconnected with the specific subject- regard must be had for the dictates of matter of the trade-mark right. That the common market and for the legal subject-matter may only be defined on requirements of the EEC Treaty" the basis of what is regarded as the ([1978] ECR at p. 1175).

It then goes on to place the question raised within the context of the relevant According to the Commission, the case-law. argument of the plaintiff in the main proceedings that the trade-mark right relates to the totality of the packaging and its content marketed in the Federal Republic of Germany as a unit in itself is The specific subject-matter of the trade- not valid under Community law. It mark right is in particular to ensure the considers that the essential function of proprietor's exclusive right to use the the trade mark, namely the guarantee of mark, when a product is first put info identity or origin, relates to the trade- circulation, and to protect him against marked product and not to its any competitors who might abuse the packaging. Where that trade mark position and reputation of the mark by appears on the immediate wrapping of selling products wrongly bearing it (cf. the product, the protection provided by judgment of 10 October 1978 in Case the trade mark does not extend to a 3/78, Centrafarm v American Home further external packaging. The word Products, cited above, paragraph 11 of "Vibramycin" appearing on the blister the decision). Where it is to be strip immediately surrounding the determined whether the conduct of a medicinal capsules conveys the following third party jeopardizes the existence of meaning: "The product contained in this the trade-mark right, that is to say, packaging has been manufactured by the whether it affects the substance thereof, proprietor of the mark 'Vibramycin' or the exact scope of the trade-mark right has been stamped with that mark with must be defined. In that respect the his consent." Accordingly, a third party Court takes into account the essential who does no more than present the function of the trade mark, namely the product as trade-marked by the guarantee to the consumer or final user proprietor but in a different packaging of the identity of the origin of the trade- does not affix the trade mark to the marked product (cf. judgments of 31 product. To that extent, the circum- October 1974 in Case 16/74, Centrafarm stances giving rise to this case are not v Winthrop [1974] ECR 1183, of 22 June comparable with the facts of Cases 3/78 1976 in Case 119/75, Terrapin v and 102/77 cited above. 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 Since the essential function of the trade guarantee of origin that only the mark has not been encroached upon by proprietor of the trade mark may affix it the defendant's practice, the trade-mark to the product. That guarantee implies right of the plaintiff in the main that the consumer may be certain that proceedings has not been affected.

However, the Court also declared that it It is evident from the judgment in Case might be lawful for the manufacturer of 102/77 (cited above) that the Court did a product to use different marks for the not consider that any special factor of same product in different Member States subjective intention was necessary. (paragraph 20 of the decision). Although in Case 3/78 (cited above) the Court indicated that the subjective aim on the part of the proprietor of the trade The considerations expounded in the mark to partition the markets was a judgment cited above are not confined to circumstance relevant to its decision, in the use of separate marks but also to the so doing it was examining an individual use of packagings of different sizes. In case and for precisely that reason the this case, that practice is in fact adopted same approach cannot be transposed to for legitimate motives, namely the other cases. Moreover, the judgment practices followed in prescribing delivered in Case 3/78 does not give the medicaments which differ considerably slightest indication that the Court wished from one country to another. In Case to make a subsequent rectification to the 102/77 (cited above), the Court has judgment in Case 102/77. moreover already recognized that it is lawful to offer for sale packagings of different sizes conforming to the Finally, the defendant in the main requirements of the national market proceedings points out that the Ober- concerned. landesgericht Karlsruhe, in a judgment of 7 September 1978 (GRUR 1978, 712-715), and the Hanseatische Ober- The defendant in the main proceedings landesgericht, in its judgment of 24 points out that the second sentence of January 1980, concur in their opinion Article 36 gives effect to two that it is sufficient, to establish the fundamental principles of the Treaty, existence of a disguised restriction on namely the general prohibition on trade between Member States within the

Decision

1 By order of 5 N o v e m b e r 1980, which was received at the C o u r t on 7 January 1981, the Landgericht [Regional Court] H a m b u r g referred to the Court for a preliminary ruling two questions on the interpretation of Article 36 of the Treaty.

2 T h e questions were raised in connection with proceedings between two undertakings in the pharmaceuticals sector, one of which, the plaintiff in the main proceedings (hereinafter referred to as "Pfizer"), the proprietor of a certain trade mark in serveral Member States, seeks to prevent the other, the

JUDGMENT OF 3. 12. 1981 — CASE 1/81

defendant in the main proceedings (hereinafter referred to as "Eurim- Pharm"), which has purchased a product with that trade mark put into circu- lation in one Member State, from distributing it in another Member State after re-packaging it.

3 The product in question, a wide-spectrum antibiotic called "Vibramycin", is marketed in the Federal Republic of Germany by the German subsidiary of Pfizer and is protected by a registered mark of which Pfizer is the proprietor. The British subsidiary of Pfizer manufactures the same product and markets it, in different packagings, at prices considerably lower than those applied in the Federal Republic of Germany.

PFIZER v EURIM-PHARM

" 1 . Is the proprietor of a trade mark protected in his favour in Member State A entitled under Article 36 of the EEC Treaty, in reliance upon this right, to prevent an importer from buying from a subsidiary under- taking of the proprietor of the trade mark medicinal preparations to which the proprietor's trade mark has been lawfully affixed with his consent in Member State B of the Community and which have been placed on the market under that trade mark, from re-packaging those products in accordance with the different practices of doctors in pres- cribing medicaments prevailing in Member State A and from placing those products on the market in Member State A in an outer packaging designed by the importer on the reverse side of which there is a transparent window through which is visible the label of the proprietor of the trade mark which is on the reverse side of the blister strip directly surrounding the product?

2. Is it sufficient, for the purpose of establishing that there is an unlawful restriction on trade as envisaged by the second sentence of Article 36 of the EEC Treaty, for the use of the national trade-mark right in connection with the marketing system adopted by the proprietor of the trade mark objectively to lead to a partitioning of the markets between Member States, or is it necessary on the contrary, for it to be shown that the proprietor of the trade mark exercises his trade-mark right in connection with the marketing system which he employs with the ultimate objective of bringing about an artificial partitioning of the markets?"

9 In consequence, the right attributed to the proprietor of the trade mark enabling him to prevent any use thereof which is likely to impair the guarantee of origin as defined above, is therefore part of the specific subject- matter of the trade-mark right.

10 No use of the trade mark in a manner liable to impair the guarantee of origin takes place in a case such as the one in point where, according to the findings of the national court and the terms of the question submitted by it, a parallel importer has re-packaged a pharmaceutical product merely by replacing the outer wrapping without touching the internal packaging and by making the trade mark affixed by the manufacturer on the internal packaging visible through the new external wrapping.

1 1 In such circumstances the re-packaging in fact involves no risk of exposing the product to interference or influences which might affect its original condition and the consumer or final user of the product is not liable to be misled as to the origin of the product, above all where, as in this case, the parallel importer has clearly indicated on the external wrapping that the

PFIZER v EURIM-PHARM

product was manufactured by a subsidiary of the proprietor of the trade mark and has been re-packaged by the importer.

12 The fact that the parallel importer inserted in the external packaging a leaflet containing information relating to the medicinal product — a fact which is not even mentioned in the question submitted — does not affect this conclusion.

On those grounds,

THE COURT (First Chamber)

in answer to the questions referred to it by the Landgericht Hamburg by- order of 5 November 1980 hereby rules:

Article 36 of the Treaty must be interpreted as meaning that the proprietor of a trade-mark right may not rely on that right in order to prevent an importer from marketing a pharmaceutical product manu- factured in another Member State by the subsidiary of the proprietor and bearing the latter's trade mark with his consent, where the importer, in re-packaging the product, confined himself to replacing the external wrapping without touching the internal packaging and made the trade mark affixed by the manufacturer to the internal packaging visible through the new external wrapping at the same time clearly indicating on the external wrapping that the product was manufactured by the subs- idiary of the proprietor and re-packaged by the importer.

Bosco O'Keeffe Koopmans

Delivered in open court in Luxembourg on 3 December 1981.