JURISDICTION REPORT: FRANCE
REFILLING OF GAS BOTTLES BY A COMPETITOR: TRADEMARK INFRINGEMENT?
Aurélia Marie Cabinet Beau de Loménie
When a container first sold by Company A, whose shape is protected by a three-dimensional trademark, is used by Company B to be refilled with that Company B’s product, should this be considered as a trademark infringement?
Furthermore, if the trademark of Company B is affixed to the container, which still bears the trademark of Company A, is the fact that Company A’s trademarks remain visible, relevant?
On July 14, 2011 the Court of Justice of the European Union (CJEU) gave its view for the first time on that situation (Case C-46/10, Viking Gas A/S v Kosan Gas A/S).
Until that decision, the usual answer given by the French courts to the first question was affirmative, the second question being irrelevant due to the registered trademark owned by Company A on the shape of the container itself.
Te CJEU’s position is different: the court considers first that the bottles do not constitute mere packaging of the original product; they are intended for re-use a number of times and have an independent economic value. Terefore, if the purchasers of such bottles were tied to a single gas supplier due to trademark rights, competition would be unduly reduced. Te sale of the bottle should be considered as exhausting the original rights and the right to use those bottles freely should therefore be transferred to purchasers, including the right to exchange them or have them refilled by whomever they please.
Company A may oppose further refilling by Company B only for legitimate reasons. Such legitimate reasons would exist notably if the condition of the goods is changed or impaired aſter they have been put on the market, or if the use by Company B of a sign seriously damages the reputation of the mark of Company A, or gives the impression that there is a commercial connection between the two companies.
Taking into account the practices in the relevant sector and, in particular, that consumers are used to having their gas bottles refilled by other dealers, the CJEU decides in the present case that there are low chances for the consumer to believe in an economic link between the two companies, A and B.
Furthermore for the court, the fact that the gas bottles still have Company A’s marks remaining visible, in spite of the labelling affixed on those bottles by Company B, allows the consumer to remain aware that the bottles were originally sold by Company A and eliminates the risk of association between the two companies.
72
Another case still pending before the CJEU is about the refilling of cans bearing trademarks of the original product, to be exported thereaſter. Te Advocate General suggested on April 14, 2011, that the reply should be that the mere refilling of cans bearing a protected trademark does not constitute use of that trademark in the course of trade, when the refilling was a service rendered to respond to a third party’s request (Case C-119/10, Frisdranken Industrie Winters BV v Red Bull GmbH).
As a consequence, the French courts should modify their view and follow the position adopted by the CJEU. Tis means that refilling of containers may be considered as non-infringing even though the trademark originally affixed remains, and a new one is added. However, there is still a difficulty in French law.
Article L.713-2 of the intellectual property code provides that the removal or the modification of a trademark regularly affixed on goods is prohibited when not authorised by its owner.
In addition, Article L.217-2 of the consumer code provides the prohibition of any fraudulent alteration, masking, or modification of names or signs which are affixed on goods and serve to identify them physically or electronically.
Several decisions were adopted on the basis of these articles, prohibiting removal of the original trademark or relabelling.
Te future will tell us whether the French courts abandon completely this solution or whether they resist this new limitation to trademark rights.
Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at:
amarie@bdl-ip.com
World Intellectual Property Review November/December 2011
www.worldipreview.com
“REFILLING OF CONTAINERS MAY BE CONSIDERED AS NON-INFRINGING EVEN THOUGH THE TRADEMARK ORIGINALLY AFFIXED REMAINS, AND A NEW ONE IS ADDED.”
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100