C-349/95
ECLI:EU:C:1997:95
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LOENDERSLOOT v BALLANTINE
OPINION OF ADVOCATE GENERAL JACOBS delivered on 27 February 1997
1. The questions put to the Court in this main proceedings nevertheless seem suffi- case by the Netherlands Hoge Raad ciently clear for the Court to provide the (Supreme Court) require the Court to Hoge Raad with a useful reply. develop further, in the context of the relabel- ling by a parallel importer of alcoholic drinks, the principles laid down in its rulings concerning parallel imports of repackaged pharmaceutical products. In particular the question arises whether a trade-mark propri- etor may rely on his trade mark in order to prevent the relabelling of alcoholic drinks undertaken with a view to removing identi- fication marks allegedly used by the propri- etor to monitor parallel imports and detect shortcomings in his sales network.
3. Loendersloot, apparendy trading at the material time as a single-person company, is a goods carrier established in the Nether- lands, part of whose activities allegedly The facts and the national court's questions include 'decoding' of bottles of Scotch whisky for the purposes of parallel trade. By decoding is meant the removal of identifica- tion numbers which are placed on those bottles by the producers. There is however no agreement on the reasons for which Loendersloot might engage in that activity, nor on the precise aims which those identifi- 2. The proceedings before the Netherlands cation numbers are intended to serve. There courts were originally commenced in 1990, is also no agreement on how many or what and the parties to these proceedings have type of numbers the bottles carry, nor o n modified their claims on several occasions. their exact location. It appears that at least in The parties are not in agreement, even at some cases Loendersloot removes or partly this stage, on the precise facts of the case, removes labels carrying the producers' trade and much of the hearing before the Court marks, and either reaffixes those labels or was spent disputing those facts, which replaces them with similar ones; in some appear not to have been fully established by cases the labels themselves carry the identifi- the national courts. The issues raised by the cation numbers which Loendersloot seeks t o remove, while in other cases the numbers are placed on the bottles and are covered by the * Original language: English. label.
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4. The other parties to the main proceedings (d) the removal from those bottles of the are 15 companies, established under either word 'pure'; Scottish or English law. For the sake of con- venience I shall hereinafter refer to them col- lectively as 'Ballantine and others'. They produce reputed Scotch whiskies such as Ballantine's, Long John, J & B, Johnnie Walker, White Horse, Old Parr, Glenfiddich (e) the exportation of the bottles thus and William Grant's. In 1990 Ballantine and treated to traders in France, Spain, others initiated proceedings against Loender- England, the United States and Japan. sloot before the Arrondissementsrechtbank (District Court), Breda, seeking an injunc- tion restraining Loendersloot from perform- ing essentially the following acts:
5. Throughout the proceedings Loender- sloot claimed that those acts (if committed, which in certain respects it denies) are not (a) the removal of identification numbers unlawful and are necessary in order to effect from whisky bottles produced by Bal- parallel imports. Loendersloot claims that lantine and others; Ballantine and others aim to partition the markets within the Community and else- where in order to maintain artificial differ- ences in prices. It alleges that Ballantine and others seek to prevent importers of Scotch whiskies in low-price countries from deliver- ing to high-price countries and that the iden- tification numbers on bottles of whisky enable those importers to be monitored by (b) the removal from those bottles of the permitting Ballantine and others to retrace trade marks of Ballantine and others, and the route followed by botdes appearing on their re-application, either by re-affixing the 'wrong' markets. the original labels or by replacing them with copied labels;
6. Throughout the proceedings Ballantine (c) the removal from those bottles of the and others vigorously denied those allega- name of the importer, and its replace- tions. Their position is that the identification ment by the name of an importer having numbers serve wholly legitimate purposes, no contractual relationship with Ballan- such as the recall of defective products and tine and others; the fight against counterfeiting. They deny
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that their aim is to partition markets within for an injunction prohibiting the removal of the Community. identification numbers and the export of the products without their identification marks. O n the issue of the alleged trade-mark infringement, however, the Gerechtshof held that the Arrondissementsrechtbank had righdy concluded that the removal and 7. In a judgment of 21 July 1992 the re-application of a trade mark by a third Arrondissementsrechtbank granted injunc party amounted to a prohibited use of that tions prohibiting Loendersloot from remov trade mark and had therefore rightly ordered ing the identification marks from the bottles Ballantine and others to produce evidence and packaging and from exporting the prod concerning their alleged trade-mark rights. ucts without their identification marks (the The Gerechtshof rejected Loenderslooťs injunctions mentioned at points (a) and (e) arguments that Articles 30 and 36 of the above). ' It further ordered Ballantine and Treaty precluded the grant of the injunction others to produce evidence of their alleged sought in relation to trade marks. It consid trade-mark rights (point (b) above) and ered that the exclusive right of the proprietor allowed them to make further submissions of a trade mark to affix that mark formed explaining their interest in obtaining the part of the specific subject-matter of trade injunctions sought under points (c) and (d) marks and that, since Loendersloot did not above (removal and replacement of the name claim that the trade marks themselves (as of the importer, and removal of the word opposed to the identification numbers) were 'pure'). used with a view to an artificial partitioning of markets, the injunctions sought by Ballan tine and others were not contrary to Articles 30 and 36.
8. Loendersloot appealed against that judg ment to the Gerechtshof (Regional Court of Appeal), 's-Hertogenbosch. It asked the Gerechtshof to set aside the judgment, to rule on the case itself and to reject all claims made by Ballantine and others. The latter lodged a cross-appeal, reiterating the claims 10. Loendersloot lodged an appeal on points made at first instance. of law against the judgment of the Gerecht shof to the Hoge Raad. Ballantine and others lodged a cross-appeal. In its judgment of 3 November 1995 the Hoge Raad confirmed the decisions of the lower courts to the effect that the removal and re-application of a trade 9. In a judgment of 28 March 1994 the Gere mark by a third party without the consent of chtshof, partly setting aside the judgment of the trade-mark proprietor was prohibited the Arrondissementsrechtbank, dismissed under national law, namely the Benelux the application by Ballantine and others Merkenwet (Benelux Trade Mark Law). It further took the view that it could not rule on the submissions concerning Articles 30 1 — See paragraph 4 above. and 36 of the Treaty without first making a
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reference to this Court. It therefore put the the trade-mark proprietor to detect following questions to the Court concerning shortfalls within his sales organization the interpretation of Article 36 of the Treaty: and thus to combat parallel trade in his products, must such an exercise of the trade-mark right be regarded as a "dis- guised restriction on trade between Member States" aimed at achieving an artificial compartmentalization of the '(a) Is the specific subject-matter of the markets? rights attaching to a trade mark to be regarded as including the power con- ferred on the proprietor of a trade mark under national law to oppose, with regard to alcoholic drinks manufactured by him, the removal by a third party of labels affixed by the proprietor o n (d) To what extent is the answer to ques- bottles and on the packaging containing tion (c) affected where the trade-mark them, and bearing his mark, after the proprietor has affixed those identifica- drinks have been placed by him on the tion marks either pursuant to a legal Community market in that packaging, obligation or voluntarily, but in any and the subsequent re-application of event with a view to making a "product those labels by that third party or their recall" possible and/or in order to limit replacement by similar labels, without his product liability and/or to combat thereby in some way damaging the counterfeiting, or, as the case may be, original condition of the product? solely in order to combat parallel trade?'
(b) In so far as the labels are replaced b y other similar labels, is the position dif- 11. In the proceedings before this Court ferent where the third party omits the written observations were submitted by indication "pure" appearing on the Loendersloot, Ballan tine and others, the original labels and/or, as the case may United Kingdom and the Commission, all of be, replaces the importer's name with whom were also represented at the hearing. another name?
Relevant Treaty provisions and case-law (c) If question (a) falls to be answered in the affirmative, but the proprietor of the trade mark avails himself of the power referred to in that question in order to prevent the third party from removing the identification marks which the 12. Before turning to the Hoge Raad's trade-mark proprietor has affixed on or questions it may be helpful to set out the underneath the labels in order to enable basic principles applicable in this area as
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they result from the Treaty and the Court's the right to use that trade mark for the pur- case-law. pose of putting a product into circulation for the first time and therefore to protect him against competitors wishing to take advan- tage of the status and reputation of the trade mark by selling products illegally bearing that mark. It follows that a trade-mark 13. Where a trade-mark owner is allowed by owner cannot in principle rely upon his national law to use his trade mark to prevent trade-mark right to prevent the free move- the importation and sale of goods that are ment of a product which has been lawfully lawfully on the market in another Member put on the market by him or with his con- State, that amounts to a measure having sent; in such circumstances his exclusive equivalent effect to a quantitative restriction right to use the mark is said to be exhausted. on imports within the meaning of Article 30. If that were not the case he would be able t o Similarly allowing a trade mark to be used to partition off national markets and thereby prevent the export of such goods to other restrict trade between Member States in a Member States amounts to a measure having situation in which no such restriction equivalent effect to a quantitative restriction was necessary to guarantee the essence of the on exports contrary to Article 34 of the exclusive right flowing from the trade Treaty. mark. 2
14. By virtue of the first sentence of Article 36, Articles 30 and 34 do not preclude pro- hibitions or restrictions which are justified 16. However, the trade-mark owner does on grounds of the protection of industrial or have the right to prevent further marketing commercial property. The second sentence of under certain circumstances. The scope of his Article 36 goes on to state that such prohibi- right follows from the essential function of a tions or restrictions must not constitute a trade mark, namely to guarantee the identity means of arbitrary discrimination or a dis- of origin of the marked product to the con- guised restriction on trade between Member sumer or ultimate user by enabling him States. without any possibility of confusion to dis- tinguish that product from products which have another origin. 3 Moreover, trade-mark rights allow the owner to attract and retain customers by the quality of their products and services, which is possible by means of 15. Article 36 permits exceptions to the free movement of goods on such grounds only to the extent to which the exceptions are neces- 2 — Case 78/70 Deutsche Grammophon v Metro [1971] ECR sary for the purpose of safeguarding rights 487, Case 16/74 Centrafarm v Winthrop [1974] ECR 1183, which constitute the specific subject-matter Case 19/84 Pharmon v Hoechst [1985] ECR 2281 and Case C-10/89 HAG GF ('HAG ll"j [1990] ECR 1-3711. of such property. The specific subject-matter 3 — Case 102/77 Hoffmann-La Roche v Centrafarm [1978] ECR of a trade-mark right includes the guarantee 1139, paragraph 7 of the judgment, Case 3/78 Centrafarm v American Home Products Corporation [1978] ECR 1823, to the owner of the trade mark that he has paragraphs 11 and 12, and 'HAG II', paragraph 14.
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the distinctive signs which allow them to be adopted, will contribute to the artificial identified. 4 partitioning of the markets between Member States;
17. It follows that, notwithstanding the fact — it is shown that the repackaging cannot that a product bearing a mark has been law- adversely affect the original condition of fully marketed by the owner or with his the product; consent, the owner of a trade mark may oppose any use of the mark which is liable t o impair the guarantee of origin so understood.
— the owner of the mark receives prior notice before the repackaged product is put on sale; and
18. Applying those principles to the repack- aging of pharmaceutical products for the purpose of parallel trade, the Court held in Hoffmann-La Roche v Centrafarm that — it is stated on the new packaging by Article 36 is to be interpreted as allowing a whom the product has been repackaged. 5 trade-mark owner to rely on his rights as owner to prevent an importer from market- ing a product put on the market in another Member State by the owner or with his con- sent, where that importer has repackaged the product in new packaging to which the trade mark has been reaffixed; but the trade-mark 19. In its judgment in Bristol-Myers Squibb, owner may not rely on his rights in that way, delivered after the present reference was where: made, the Court provided further clarifica- tion of those conditions. Later in this Opin- ion I shall consider in more detail the first condition, namely artificial partitioning of the markets, which is of particular relevance to the present case. — it is established that the use of the trade- mark right by the owner, having regard to the marketing system which he has
4 — Joined Cases C-427/93, C-429/93 and C-436/93 Bristol- 20. It is however appropriate also to refer at Myers Squibb v Paranova and C. H. Boehringer Sohn, Boe- the outset to the Court's findings with hringer Ingelheim KG, Boehringer Ingelheim A/S v Para- nova and Bayer Aktiengesellschaft, Bayer Danmark v Paranova [1996] ECR 1-3457, Joined Cases C-71/94, C-72/94 and C-73/94 Eurim-Pharm Arzneimittel v Beiers- dorf, Boehringer Ingelheim KG and Farmitalita Carlo Erba [1996] ECR 1-3603, and Case C-232/94 MPA Pharma v 5 — Hoffmann-La Roche v Centrafarm, cited in note 3, para- Rhône-Poulenc Pharma [1996] ECR 1-3671. graph 14 of the judgment.
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respect to the other conditions which must ferred by a trade mark', which provides as be respected by the parallel importer in the follows: course of such repackaging, as elaborated in the Bristol-Myers Squibb judgment. 6 I would note in particular that, although the requirement that the original condition of the product must not be affected refers to the condition of the product inside the packag- ' 1 . The trade mark shall not entide the pro- ing, the Court made the point that inappro- prietor to prohibit its use in relation to priate presentation of the repackaged prod- goods which have been put on the market in uct, in particular defective, poor quality or the Community under that trade mark by untidy packaging, could damage the reputa- the proprietor or with his consent. tion of the trade mark. 7
Two preliminary matters 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.'
21. It is against that background that the questions put to the Court by the Hoge Raad in the present case must be considered. Before turning to those issues, however, I should deal briefly with two preliminary 22. At the hearing there was some discussion matters. First, it may be noted that the Hoge of whether the Court should consider the Raad's questions concern the interpretation application of the directive to the circum- of the Treaty, in particular Article 36, and stances of the present case. As I noted in my that it has not put any question concerning Opinion in Bristol-Myers Squibb,9 an the interpretation of Council Directive injunction is a remedy designed to prevent a 89/104. 8 That directive, which approximates wrong from occurring or recurring in the certain national provisions of trade-mark future; consequently, any injunction granted law, was required to be implemented by by the national courts after a preliminary Member States by 31 December 1992. Of ruling is delivered in the present case will particular relevance is Article 7 of the direc- necessarily relate to the period after the tive, entitled 'Exhaustion of the rights con- directive took effect. However, in Bristol- Myers Squibb the Court made it clear that Article 7 of the directive, and in particular Article 7(2), was to be given the same 6 — At paragraph 67 et seq. See also paragraph 58 et seq. of the judgment in Eurvrn-Pharm, cited in note 4 and paragraph 39 interpretation as that given by the Court to et seq. of MPA Pharma, cited in note 4. 7 — At paragraphs 75 and 76 of the judgment. 8 — First Council Directive 89/104 of 21 December 1988 to approximate the laws of the Member Sutes relating to trade marks, OJ 1989 L 40, p. 1. 9 — Cited in note 4, paragraph 58 of the Opinion.
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Articles 30 and 36 of the Treaty. At para- Ballantine and others fail to understand graph 50 of its judgment the Court stated: in what way relabelled bottles could be exported more easily than original bottles.
'In accordance with the case law, Article 7(2) of the directive must therefore be interpreted as meaning that a trade-mark owner may legitimately oppose the further marketing of 25. I am not persuaded by those arguments. a pharmaceutical product where the importer In proceedings under Article 177 of the has repackaged it and reaffixed the trade Treaty the Court is in principle bound to mark, unless the four conditions set out in answer the questions referred to it by a the Hoffmann-La Roche judgment ... have national court. In a case where it is suggested been met.' that the questions referred do not need to be answered, it is only where those questions are manifestly irrelevant to the dispute before the national court that the Court will not answer them. 10 In the present case the Hoge Raad has established, or at least assumed, that, if the injunctions sought by Ballantine and others based on an infringe- 23. Consequently, although I consider that ment of trade-mark law were granted, that the Court should respond to the questions as would restrict the free movement of goods framed by the Hoge Raad, I do not think the and would therefore have to be justified result would differ under the directive. under Article 36 of the Treaty. I see no rea- son for the Court not to accept that premiss. Even if it may not be entirely clear whether the injunctions sought by Ballantine and others would prevent Loendersloot from importing Scotch whiskies into the Nether- lands, it should none the less be borne in 24. Secondly, Ballantine and others suggest mind that it is the object of one of those that Article 30 does not apply in the circum- injunctions that Loendersloot should be pro- stances of the present case so that the Hoge hibited from exporting relabelled bottles to a Raad's questions concerning the interpreta- number of Member States (namely France, tion of Article 36 are irrelevant. They argue Spain, Italy and the United Kingdom). If that, in so far as Loendersloot exports rela- that injunction were granted it would obvi- belled bottles to third countries, the free ously amount to a measure equivalent in movement of goods between Member States effect to a quantitative restriction on exports, is not in issue. Moreover, they deny that covered by Article 34 of the Treaty. The their right to oppose the re-affixing of their Hoge Raad was therefore correct in referring trade marks conflicts with the rules on free movement: Loendersloot is in no way pre- vented from exporting original bottles of 10 — See, for example, Case C-368/89 Crispoltoni [1991] ECR Scotch whisky to other Member States, and 1-3695, at paragraph 11 of the judgment.
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the question of justification under Article 36 answer to that question differ if the word to this Court. 'pure' is omitted from the label and the importer's name is replaced by another name?
26. As regards the argument that Loender- sloot is perfectly entitled to export bottles (b) If the trade-mark owner does have that which are not relabelled, the Hoge Raad's right, does the exercise of that right con- questions have to be considered on the stitute a disguised restriction on trade hypothesis that parallel trade in the products aimed at achieving an artificial partition- concerned would not be possible unless they ing of the market where it is designed to were relabelled. If that hypothesis is correct prevent the removal of identification (which is a matter for the national courts to numbers used for monitoring parallel establish), then reliance by Ballantine and imports? What importance is to be others on their trade-mark rights in order to attached to the fact that the identification prevent relabelling clearly operates as a bar- numbers were affixed either pursuant t o rier to trade which must be justified under a legal obligation or voluntarily with a Article 36 of the Treaty. view to making product recall possible, to limiting the trade-mark owner's prod- uct liability or to combating counterfeit- ing or solely with a view to combating parallel trade?
The Hoge Raad's questions
28. It seems to me that the answers to those 27. I therefore turn to the questions put by questions follow in part from the abovemen- the Hoge Raad. The issues raised by those tioned principles laid down by the Court in questions are essentially as follows: its previous rulings, in particular the judg- ments in Hoffmann-La Roche n and Bristol- Myers Squibb.12 The essential principle which results from those judgments seems to be the following: a trade-mark owner cannot rely on his trade-mark rights to prevent a (a) Does the trade-mark owner have the parallel importer from repackaging goods right, after goods have been placed on bearing the trade mark and from re-applying the market by the trade-mark owner or the trade mark to the repackaged goods with his consent, to oppose removal of labels bearing the mark and replacement by similar labels where the condition of 11 — Cited in note 3. the product is not damaged? Does the 12 — Cited in note 4.
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where it is established that the use of the prior notice before the repackaged product is trade-mark right by the owner will contrib- put on sale and that it be stated on the new ute to the artificial partitioning of the packaging by whom the product has been markets between Member States; provided repackaged, it seems to me that those are that in the course of such repackaging: simply more specific and detailed conditions intended to ensure, at least in the case of pharmaceutical products, that the essential principle as formulated above is complied with.
(i) the guarantee of origin is not impaired;
30. The Court's case-law on repackaging (ii) the original condition of the product is hitherto has been developed in relation to not adversely affected; and pharmaceutical products, whereas the present case is concerned with the relabelling of alcoholic drinks, notably whisky. I see no basis for making any distinction, so far as the essential principle is concerned, between dif- ferent categories of product. The underlying (iii) the reputation of the trade mark is not rationale remains the same: the right of the damaged. trade-mark owner to determine the mode of presentation of his goods must in certain cir- cumstances give way to the requirements of the free movement of goods, subject always to certain conditions which are necessary to preserve the essential function of the trade mark. It may be noted that even that last require- ment, concerning the reputation of the trade mark, could to some extent be regarded as related to the guarantee of origin which is the essential function of the trade mark, since inappropriate presentation of the repackaged product could certainly cause confusion in 31. But the way in which the principle the minds of consumers about the origin of applies may vary according to the circum- the product. stances. Different considerations may apply to different products. It was relevant in Bristol-Myers Squibb, for example, that the original condition or function of the phar- maceutical products in question could be impaired by the omission of certain impor- tant information concerning the nature, com- 29. As for the third and fourth conditions position, effect, use or storage of the prod- spelt out in Hoffmann-La Roche, requiring uct; such considerations may be of less that the owner of the mark should receive importance in the present case.
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32. Equally, it may not be right to assume any event permissible only to the limited that the third and fourth conditions laid extent necessary to facilitate parallel imports; down in Hoffmann-La Roche, which may there should therefore be no question of well be vital in relation to pharmaceutical substantially affecting the image of the prod- products, apply in the same way in respect of uct. I would add that in any event the rela- all products and regardless of the extent of belling in issue in the present case appears t o the relabelling — however minimal it may be involve substantially less interference with — of the products concerned. In the present the presentation of the product than the case that issue does not need to be addressed, repackaging involved in Bristol-Myers since the Hoge Raad has not put questions Squibb. If the issue were to arise, it seems t o about those conditions. me that the national court would have to be satisfied, before prohibiting relabelling, that there was a significant impairment of the presentation of the product which could affect the reputation of the trade mark.
33. In any event, this Court would in my view be going beyond its functions under Article 177 of the Treaty if it were to rule on all aspects of repackaging and relabelling which might be undertaken by parallel importers in relation to different types of product. Once the Court has spelt out the 35. The Hoge Raad asks specifically about essential principle or principles, it must be three matters: left to the national courts to apply those principles in the cases before them.
(a) the omission of the word 'pure' from the relabelled products; 34. In so far as the reputation of the trade mark is concerned, the Court has now given the necessary guidance in the Bristol-Myers Squibb judgment, in which it stressed the importance of the presentation of pharma- ceutical products in inspiring public confi- dence in the quality and integrity of the (b) the replacement of the importer's name products and pointed out that defective, with another name; and poor quality or untidy packaging could dam- age the trade mark's reputation. I would cer- tainly accept that in the case of highly reputed Scotch whisky any form of shoddy repackaging (including labelling) is liable to damage the reputation of the trade mark. But it must be borne in mind that relabelling is in (c) the removal of identification marks.
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36. All three matters must be assessed in the State of importation by reason, in particular, light of the first condition laid down in of a rule authorizing packaging only of a cer- Hoffmann-La Roche, namely artificial parti- tain size or a national practice to the same tioning of the markets between Member effect, sickness insurance rules making the States. As regards the omission of the word reimbursement of medical expenses depend 'pure', Loendersloot claims that that word on the size of the packaging, or well- may not be used under the legislation of established medical prescription practices some of the countries to which it exports (it based, inter alia, on standard sizes recom- has not indicated which ones). mended by professional groups and sickness insurance institutions.
37. It seems to me that the Court's ruling in Bristol-Myers Squibb, delivered during the course of the present proceedings, provides adequate guidance on that question. In that case the Court held:
The owner may ... oppose the repackaging of 'Reliance on trade-mark rights by their the product in new external packaging where owner in order to oppose marketing under the importer is able to achieve packaging that trade mark of products repackaged by a which may be marketed in the Member State third party would contribute to the parti- of importation by, for example, affixing to tioning of markets between Member States the original external or inner packaging new in particular where the owner has placed an labels in the language of the Member State of identical pharmaceutical product on the mar- importation, or by adding new user instruc- ket in several Member States in various tions or information in the language of the forms of packaging, and the product may Member State of importation, or by replac- not, in the condition in which it has been ing an additional article not capable of gain- marketed by the trade-mark owner in one ing approval in the Member State of impor- Member State, be imported and put on the tation with a similar article that has obtained market in another Member State by a parallel such approval.' 1 3 importer.
The trade-mark owner cannot therefore oppose the repackaging of the product in 38. The Court went on to explain the under- new external packaging when the size of lying principle to be observed in applying packet used by the owner in the Member State where the importer purchased the product cannot be marketed in the Member 13 — At paragraphs 52 to 55 of the judgment.
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the condition of artificial partitioning of the of the identification numbers serve other, markets as follows: legitimate, purposes.
'The power of the owner of trade-mark rights protected in a Member State to oppose the marketing of repackaged products under 41. In that respect the present case differs the trade mark should be limited only in so from previous cases in so far as the need to far as the repackaging undertaken by the relabel the products arises not from the need importer is necessary in order to market the to meet marketing requirements in the product in the Member State of importa- importing State but from the alleged need to tion.' "» prevent the trade-mark owner from being able to trace the route of goods and put pres- sure on dealers to prevent parallel imports. If however one looks to the basic principle underlying the ruling in Bristol-Myers Squibb set out at paragraph 38 above, it is 39. It is therefore for the national courts in clear that, subject to compliance with the the present case to determine whether the conditions designed to safeguard the origin, removal of the word 'pure' is necessary to quality and reputation of the product, an meet restrictions imposed by certain Mem- importer must be able to relabel products ber States into which Loendersloot wishes to where that is necessary in order to effect par- import the goods. It might be contended that allel trade; otherwise the owner of a trade the omission of the word 'pure' might affect mark would be able, by relying on his trade- the reputation of the mark. That seems mark right, artificially to partition the mar- unlikely, however, if the removal of the word kets of the Member States. It is for the is required by certain Member States. national courts to determine whether that requirement is met in the present case.
40. The other two matters referred to by the Hoge Raad do on the other hand require the Court to provide further clarification of the conditions laid down in Hoffmann-La 42. O n this point it is also relevant to refer Roche. Loendersloot claims that the import- to the following statement of the Court in er's name is replaced and that the identifica- the judgment in Bristol-Myers Squibb: tion numbers are removed in order to pre- vent Bailamme and others from combating parallel trade by exerting pressure on its dealers. That claim is challenged by Ballan- tine and others, who reply that the mention- ing of the name of the importer and the use '... the Court's use of the words "artificial partitioning of the markets" does not imply 14 — At paragraph 56 of the judgment. that the importer must demonstrate that, by
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putting an identical product on the market in voluntarily for the purposes of product varying forms of packaging in different recall, limiting product liability and preven- Member States, the trade-mark owner delib- tion of counterfeiting. It is clear that num- erately sought to partition the markets bers identifying the lot to which a product between Member States. By stating that the belongs may serve legitimate public interests, partitioning in question must be artificial, the in particular that of consumer protection. Court's intention was to stress that the Indeed, for example, Article 2 of Council owner of a trade mark may always rely o n Directive 89/396 16 prohibits the marketing his rights as owner to oppose the marketing of a foodstuff unless it is accompanied by an of repackaged products when such action is indication allowing identification of the lot justified by the need to safeguard the essen- to which a foodstuff belongs. However, the tial function of the trade mark, in which case extent to which a parallel importer may law- the resultant partitioning could not be regarded as artificial.' 15 fully remove an identification number, applied either voluntarily or by virtue of a Community or national rule, on the ground that it is used for the purpose of tracking parallel imports is a separate issue going beyond the scope of the Hoge Raad's ques- tions, which are concerned solely with the exercise of trade-mark rights. It is clear that 43. Finally, the Hoge Raad asks what impor- tance is to be attached to the fact that the the removal of such identification numbers identification numbers may be applied to the cannot be resisted by virtue of trade-mark products by virtue of legal requirements or rights taken alone.
Conclusion
44. A c c o r d i n g l y the questions referred b y t h e H o g e Raad should in m y o p i n i o n be a n s w e r e d as follows:
1. T h e o w n e r of a t r a d e m a r k cannot exercise his t r a d e - m a r k rights t o o p p o s e , w i t h regard t o alcoholic d r i n k s manufactured b y h i m , the removal b y a t h i r d p a r t y
15 — At paragraph 57. 16 — Council Directive 89/396 of 14 June 1989 on indications or marks identifying the iot to which a foodstuff belongs, OJ 1989 L 186, p. 21.
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of labels affixed by the proprietor on bottles and on the packaging containing them, and bearing his mark, after the drinks have been placed by him on the Community market in that packaging, and the subsequent re-application of those labels, where it is established that the use of the trade-mark right by the owner will contribute to the artificial partitioning of the market between Member States; provided that in the course of such relabelling:
(i) the guarantee of origin is not impaired;
(ii) the original condition of the product is not adversely affected; and
(iii) the reputation of the trade mark is not damaged.
2. Subject to the same conditions, the owner of the trade mark cannot exercise his trade-mark rights to oppose the omission of the indication 'pure' appearing on the original labels and/or the replacing of the importer's name with another name.
3. Subject to the same conditions, the owner of the trade mark cannot exercise his trade-mark rights to oppose the removal of identification marks which he has affixed on or underneath the labels.
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