C-352/95

PHYTHERON INTERNATIONAL ν BOURDON

OPINION OF ADVOCATE GENERAL JACOBS delivered on 24 October 1996 *

1. The present case, which comes by way of 4. Before delivery, Jean Bourdon cancelled a reference for a preliminary ruling from the its order. It appears from the order for refer­ Tribunal de Commerce, Pontoise, raises ence that Jean Bourdon claimed that the questions on the principle of the exhaustion import into France of plant health products of a trade mark owner's rights under Com­ originating in third countries was unlawful munity law. in France without the authorization of the trade mark owner, that to its knowledge there was no such authorization, and that if it purchased the products it would expose itself to an action by the trade mark owner for infringement of its trade mark. Phytheron subsequently brought an action The facts and the questions referred against Jean Bourdon for damages for repu­ diation of the contract.

2. Very little information is contained in the order for reference. The facts as set out in that order are as follows.

— is also approved in Member State A?

6. Considering that resolution of the dispute depended on the interpretation of Commu­ nity rules concerning the principle of free movement of products bearing trade marks, the national court referred the following (2) Does a prohibition based on the trade questions to the Court for a preliminary rul­ mark legislation of Member State A ing: infringe Article 30 of the Treaty?'

7. In summary, therefore, the information '(1) Can a product which is covered by a contained in the order for reference, and the protected trade mark and which is law­ way in which the questions are phrased, sug­ fully acquired by a trader of Member gest that the factual situation was as follows. State A in Member State B, where it is The product Previcur N'originate(d)' with approved and marketed under the same the German company Schering (which pre­ trade mark, be lawfully imported from sumably therefore owned the trade mark for Member State Β and marketed in Mem­ Previcur Ν in Germany). Schering did not, ber State A when the product in ques­ however, manufacture the product itself. tion: Instead it was manufactured in Turkey by a company in the same group as Schering. It was then imported into (and, in my view, by implication placed on the market in) Ger­ many by Schering (or at least by an affiliated company). Phytheron purchased a certain quantity of the product and imported it from Germany into France. It entered into a con­ tract with Jean Bourdon for the sale of 3 000 — is a genuine product which has not litres of the imported product. Jean Bour­ undergone any processing; don, however, cancelled its order because it

8. N o details are given of the group struc­ ture of the companies. However, it seems to be implicit that both Schering and the Turk­ 10. Subsequent to its order for reference, the ish subsidiary of the Hoechst group were at national court wrote suggesting a somewhat the relevant time under the control of the different version of the facts. It stated that parent company of the Hoechst group. It the products in issue circulated lawfully in seems to be implicit also that the owner of Germany for the sole reason that that coun­ the trade mark in France was either Schering try applied the principle of the international or a company affiliated to Schering and exhaustion of rights, thus implying that the under the control of that parent company. goods in question were in fact imported by a third party. In addition, Phytheron makes further assertions in its observations which partly conflict with and partly supplement the order for reference. Phytheron states, in particular, that it acquired the batch of prod­ ucts in question from a company called Chembico G m b H which had purchased the 9. The Commission maintains that it is not products in Turkey from the Turkish subsid­ entirely clear whether the particular batch of iary of the Hoechst group. products in question (i. e. the 3 000 litres) was imported into the Community (Ger­ many) by a member of the Hoechst group or whether it was imported by a third party and the Hoechst group simply imported other batches. However, although the order for reference alludes to the principle of the inter­ national exhaustion of rights — according to which, if a trade mark owner consents to the marketing of his products in any other coun­ 11. Both the subsequent letter from the try, he cannot oppose the subsequent impor­ national court and Phytheron's observations tation of those products by a third party — accordingly suggest that at least the batch of there is no suggestion in the facts set out in products in question may well have been the order for reference that anyone other marketed in the Community without the than the Hoechst group imported the batch express consent of the trade mark owner. If in question into the Community. In my view so, the question which then arises is whether, it must, therefore, be assumed from the if products are circulating freely in a Mem­ order for reference that the batch in question ber State purely by reason of the application

12. In my view, however, the facts must be taken as set out in the order for reference. The information provided and the questions raised in orders for reference must be not only such as to enable the Court usefully to reply but also such as to give the Govern- ments of the Member States and other inter- ested parties the opportunity to submit 14. As I mentioned earlier, however, I con- observations pursuant to Article 20 of the sider it to be implicit from the order for ref- Statute of the Court of Justice of the E C . 1 erence that the trade mark is held in both In the present case they did not have the Germany and France within the Hoechst opportunity to submit written observations group and that the owner of the mark or on the facts as set out in the subsequent let- another company in that group placed the ter from the national court and Phytheron's products on the market in Germany. For observations. Moreover, since the defendant reasons which I shall discuss below, 2 that is in the national proceedings, Jean Bourdon, sufficient information as to the ownership of has not submitted observations, it is not clear the mark. Furthermore, it has not been sug- whether the facts as set out by Phytheron are gested that the statements added to the label agreed. The facts and questions must, there- were such as to affect the trade mark owner's fore, be taken as set out in paragraphs 3 to 9 rights, so that I do not consider further above. details as to the nature of those statements to be necessary.

1 — See, for example, Order of the Court of 2 February 1996 in Case C-257/95 Bresle [1996] ECR I-233, paragraph 19. 2 — Paragraphs 19 and 20.

17. Although the national court's questions are framed in terms of Article 30 of the Treaty, the principle of the exhaustion of Article 7 was implemented in French law by Article 15 III of Law N o 91-7 of 4 January 3 — Sec, for example, Case C-286/88 Falciola [1990] ECR I-191; 1991. 6 Case C-343/90 Lourenço Dias ν Director da Alfandega do Porto [1992] ECR I-4673; Casc C-83/91 Meilicke ν ADV/ ORGA [1992] ECR 1-4871; Case C-428/93 Monin Automo­ biles [1994] ECR I-1707. 4 — See, for example, Case 16/74 Centrafarm ν Winthorp [1974] ECR 1183; Case C-9/93 IHT Internationale Heiztechnik ν 5 — First Council Directive of 21 December 1988 to approximate Ideal Standard [1994] ECR I-2789; Joined Cases C-427/93, the laws of the Member States relating to trade marks, OJ C-429/93 and C-436/93 Bristol-Myers Squibb and Others ν 1989 L 40, p. 1. Paranova, Joined Cases C-71/94, C-72/94 and C-73/94 6 — Official Journal of the French Republic, 6 January 1991, Eurim-Pharm and Case C-232/94 MPA Pharma, judgment p. 317. N o w repealed and incorporated in the Code de L· of 11 July 1996. propriété intellectuelle, article L.713-4.

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OPINION OF MR JACOBS — CASE C-352/95

19. As the Court explained in Ideal Stan­ dard, 9 the principle of the exhaustion of rights 'applies where the owner of the trade 20. Since it must be assumed, for the reasons mark in the importing State and the owner mentioned above, 1 2 that the products in of the trade mark in the exporting State are question in the present case were marketed the same or where, even if they are separate in Germany by or with the consent of the persons, they are economically linked. A owner of the trade mark in Germany and number of situations are covered: products that that trade mark was owned in both Ger­ put into circulation by the same undertaking, many and France by the same company or at by a licensee, by a parent company, by a sub­ least by affiliated companies under the same sidiary of the same group, or by an exclusive overall control, it is accordingly clear that distributor.' 1 0 The Court added in that case the application of the principle of the that 'it must further be stressed that the deci­ exhaustion of trade mark rights to the sive factor is the possibility of control over present case cannot be excluded on grounds the quality of goods, not the actual exercise relating to separate ownership of the mark in of that control. Accordingly, a national law Germany and France. The application of that allowing the licensor to oppose importation principle to the present case is, therefore, of the licensee's products on grounds of subject only to there being no 'legitimate poor quality would be precluded as contrary reason' within the meaning of Article 7(2) of to Articles 30 and 36: if the licensor tolerates the Trade Mark Directive for opposition by the manufacture of poor quality products, the trade mark owner to the marketing of the products in France.

Article 7 of Council Directive 89/104/EEC must be interpreted as meaning that, where (a) a product is imported into a Member State A from a Member State B, (b) that product was placed on the market in Member State Β by the owner of the trade mark in Member State Β or with his consent, (c) the trade mark is owned in both Member States by the same company or by affiliated companies under the same overall control, (d) the product undergoes in respect of its marketing in Member State A no transformation other than the addition on the label of a number of state­ ments designed to comply with the legislative requirements of Member State A, and (e) it is not suggested that the trade mark owner's rights are infringed by the addi­ tion of such statements, neither the trade mark owner nor his licensee can invoke the trade mark legislation of Member State A to oppose the marketing of that prod­ uct in that Member State.

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