Sga_rqst[4].pdf

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CELEX-61981J0001
Judgment of the Court (First Chamber) of 3 December 1981.
Pfizer Inc. v Eurim-Pharm GmbH.
Reference for a preliminary ruling: Landgericht Hamburg - Germany.
Industrial and commercial property : trade mark rights.
Case 1/81.
European Court reports 1981, Page 02913
SummaryPartiesSubject of the caseGroundsDecision on costs Keywords:
Free movement of goods - Industrial and commercial property - Trade-mark right -Protection - Limits - Trade mark lawfully affixed to a product in a Member State - Re-packaging by a third party and importation into another Member State - Opposition by theproprietor - Not permissible( EEC Treaty , Art . 36 ) The essential function of a trade mark is to guarantee the identity of the origin of themarked product to the consumer or final user by enabling him to distinguish without anypossibility of confusion between that product and products which have another origin . Thisguarantee of origin means that the consumer or final user may be certain that a trade-marked product which is offered to him has not been subject at a previous stage in themarketing process to interference by a third person , without the authorization of theproprietor of the trade mark , affecting the original condition of the product . Therefore , the proprietor of a trade-mark right may not rely on that right in order toprevent an importer from marketing a pharmaceutical product manufactured in anotherMember State by the subsidiary of the proprietor and bearing the latter ' s trade mark withhis consent , where the importer , in re-packaging the product , confined himself toreplacing the external wrapping without touching the internal packaging and made the trademark affixed by the manufacturer to the internal packaging visible through the new externalwrapping , at the same time clearly indicating on the external wrapping that the productwas manufactured by the subsidiary of the proprietor and re-packaged by the importer . In Case 1/81Reference 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 betweenPfizer Inc ., New York , USA ,and Eurim-Pharm GmbH , Piding/Bad Reichenhall , Federal Republic of Germany , Subject of the case
On the interpretation of Article 36 of the EEC Treaty , 1. By order of 5 November 1980 , which was received at the Court on 7 January 1981 , theLandgericht ( Regional Court ) Hamburg referred to the Court for a preliminary ruling twoquestions on the interpretation of Article 36 of the Treaty .
2. The questions were raised in connection with proceedings between two undertakings inthe pharmaceuticals sector , one of which , the plaintiff in the main proceedings (hereinafter referred to as " Pfizer " ), the proprietor of a certain trade mark in serveralMember States , seeks to prevent the other , the defendant in the main proceedings (hereinafter referred to as " Eurim-Pharm " ), which has purchased a product with that trademark put into circulation in one member state , from distributing it in another member stateafter re-packaging it .
3. The product in question , a wide-spectrum antibiotic called " Vibramycin ", is marketed inthe Federal Republic of Germany by the German subsidiary of Pfizer and is protected by aregistered mark of which Pfizer is the proprietor . The British subsidiary of Pfizermanufactures the same product and markets it , in different packagings , at pricesconsiderably lower than those applied in the Federal Republic of Germany .
4. After informing Pfizer of its intentions , Eurim-Pharm marketed in the Federal Republic ofGermany the Vibramycin purchased in the United Kingdom in original packagings containing50 capsules sealed in groups of five into blister strips bearing the words " Vibramycin Pfizer" on the sheets incorporated in the strips . With a view to marketing the product in theFederal Republic of Germany , Eurim-Pharm enclosed each blister strip in a folding boxdesigned by it , without altering the strip or its contents . On the front side of the box is anopening covered with transparent material through which are visible the words " VibramycinPfizer " appearing on the sheet incorporated in the original strips . On the back of the boxthe following wording has been affixed : " Wide-spectrum antibiotic - manufacturer : PfizerLtd ., Sandwich , Kent , GB - importer : Eurim-Pharm GmbH , wholesalers of pharmaceuticalproducts , 8229 Piding ; packaged by the importer : Eurim-Pharm GmbH , 8229 Piding " .
The importer inserted a leaflet in the box containing information relating to the medicinalproduct , in accordance with the provisions of German law .
5. In its order making the reference , the Landgericht held that the operation carried out byEurim-Pharm constituted an infringement of Pfizer ' s rights under German trade-mark law .
However , in view of the fact that at an earlier stage of the proceedings in the same casethe higher court had taken the view that in the circumstances exercise of the trade-markright was precluded by Articles 30 and 36 of the Treaty , the Landgericht submitted thefollowing two questions for a preliminary ruling :" 1 . Is the proprietor of a trade mark protected in his favour in Member State A entitledunder Article 36 of the EEC Treaty , in reliance upon this right , to prevent an importer frombuying from a subsidiary undertaking of the proprietor of the trade mark medicinalpreparations 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 marketunder that trade mark , from re-packaging those products in accordance with the differentpractices of doctors in prescribing medicaments prevailing in Member State A and fromplacing those products on the market in Member State A in an outer packaging designed bythe importer on the reverse side of which there is a transparent window through which isvisible the label of the proprietor of the trade mark which is on the reverse side of theblister strip directly surrounding the product?2. Is it sufficient , for the purpose of establishing that there is an unlawful restriction ontrade as envisaged by the second sentence of Article 36 of the EEC Treaty , for the use ofthe national trade-mark right in connection with the marketing system adopted by theproprietor of the trade mark objectively to lead to a partitioning of the markets betweenMember States , or is it necessary on the contrary , for it to be shown that the proprietor ofthe trade mark exercises his trade-mark right in connection with the marketing systemwhich he employs with the ultimate objective of bringing about an artificial partitioning ofthe markets? " 6. It should in the first place be borne in mind that , according to the case-law of the Court ,as evinced in particular in the judgment of 23 May 1978 (Case 102/77 Hoffmann-La Roche vCentrafarm (1978) ECR 1139), although the Treaty does not affect the existence of therights recognized by the legislation of a Member State in the fields of industrial andcommercial property , the exercise of those rights may nevertheless , depending on thecircumstances , be subject to the prohibitions contained in the Treaty . Inasmuch as itcreates an exception to the fundamental principle of free movement of goods in thecommon market , Article 36 in fact permits derogations from that principle only to theextent to which they are justified for the purpose of safeguarding the rights which constitutethe specific subject-matter of that property .
7. The specific subject-matter of the trade-mark right is in particular to guarantee to theproprietor that he has the exclusive right to use that trade mark for the purpose of putting aproduct into circulation for the first time and therefore to protect him against competitorswishing to take advantage of the status and reputation of the trade mark by selling productsillegally bearing that trade mark .
8. In order to answer the question whether that exclusive right involves the right to preventthe trade mark from being affixed by a third person after the product has been re-packaged, regard must be had to the essential function of the trade mark , which is to guarantee theidentity of the origin of the trade-marked product to the consumer or final user by enablinghim to distinguish without any possibility of confusion between that product and productswhich have another origin . This guarantee of origin means that the consumer or final usermay be certain that a trade-marked product which is offered to him has not been subject ata previous stage in the marketing process to interference by a third person , without theauthorization of the proprietor of the trade mark , affecting the original condition of theproduct .
9. In consequence , the right attributed to the proprietor of the trade mark enabling him toprevent 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 takesplace in a case such as the one in point where , according to the findings of the nationalcourt 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 theinternal packaging and by making the trade mark affixed by the manufacturer on theinternal packaging visible through the new external wrapping .
11. In such circumstances the re-packaging in fact involves no risk of exposing the productto interference or influences which might affect its original condition and the consumer orfinal user of the product is not liable to be misled as to the origin of the product , above allwhere , as in this case , the parallel importer has clearly indicated on the external wrappingthat the product was manufactured by a subsidiary of the proprietor of the trade mark andhas been re-packaged by the importer .
12. The fact that the parallel importer inserted in the external packaging a leaflet containinginformation relating to the medicinal product - a fact which is not even mentioned in thequestion submitted - does not affect this conclusion .
13. The answer to the first question should therefore be that Article 36 of the Treaty mustbe interpreted as meaning that the proprietor of a trade-mark right may not rely on thatright in order to prevent an importer from marketing a pharmaceutical productmanufactured in another Member State by the subsidiary of the proprietor and bearing thelatter ' 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 packagingand made the trade mark affixed by the manufacturer to the internal packaging visiblethrough the new external wrapping , at the same time clearly indicating on the externalwrapping that the product is manufactured by the subsidiary of the proprietor and re-packaged by the importer .
14. As a result of the answer given to the first question an answer to the second question isno longer necessary to enable the national court to decide the case before it .
Decision on costs
15. The costs incurred by the Government of the Federal Republic of Germany and by theCommission of the European Communities , which have submitted observations to the Court, are not recoverable . As these proceedings are , in so far as the parties to the mainproceedings are concerned , in the nature of a step in the action pending before the nationalcourt , the decision on costs is a matter for that court .
Operative part
On those grounds ,the Court ( First Chamber )in answer to the questions referred to it by the Landgericht Hamburg by order of 5November 1980 hereby rules : Article 36 of the Treaty must be interpreted as meaning that the proprietor of a trade-markright may not rely on that right in order to prevent an importer from marketing apharmaceutical product manufactured in another Member State by the subsidiary of theproprietor and bearing the latter ' s trade mark with his consent , where the importer , inre-packaging the product , confined himself to replacing the external wrapping withouttouching 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 clearlyindicating on the external wrapping that the product was manufactured by the subsidiary ofthe proprietor and re-packaged by the importer .

Source: http://oami.europa.eu/en/mark/aspects/pdf/JJ810001.pdf