The exhaustion of trademark rights in cases of resale of the original product has, since yesterday, one more ruling from the Court of Justice.
The ruling arises from the preliminary ruling raised by a Finnish Court in the context of a dispute between "SodaStream" and MySoda Oy in relation to an alleged infringement of the SODASTREAM and SODA-CLUB trademarks.
SodaStream is an international company that manufactures and sells carbonation devices that allow consumers to prepare sparkling water and flavored soft drinks from tap water. In Finland, SodaStream markets these devices with a refillable carbon dioxide bottle that it also sells separately. The brands SODASTREAM and SODA-CLUB are engraved on the labeling and on the aluminum body of these bottles.
MySoda, a company domiciled in Finland, markets in Finland the carbon dioxide bottles manufactured and initially marketed by SodaStream, intended to be reused and recharged on numerous occasions. MySoda, having received, through distributors, SodaStream carbon dioxide bottles that consumers have returned empty, refills those bottles, removes the label bearing the mark of origin and replaces it with its own labels, in which the MySoda logo appears, leaving the brand of origin engraved on the body of said bottles visible.
The question referred for a preliminary ruling asked whether the owner of a trademark who has marketed in a Member State products bearing that trademark and which are intended to be reused and recharged on numerous occasions has the right to oppose the subsequent marketing of those products in that Member State. , by a reseller who has refilled them and who has replaced the label on which the mark of origin appears with another label, although leaving the mark of origin visible on the aforementioned products.
By applying existing jurisprudence, it was clear that the sale of a refillable gas bottle by the owner of the marks appearing on it exhausts the exclusive rights so that competitors can proceed to refill and exchange the empty bottles. . However, the replacement of some labels with others may be punishable when the conditions under which the product is marketed undermine the legitimate interests of the trademark owner.
The Court of Justice, when interpreting this exception to the limit of exhaustion of trademark rights, had only taken into account the characteristics of the pharmaceutical products market. With this ruling the Court enters a different market.
The key to the ruling is to determine whether there is an erroneous impression regarding the economic link between the trademark owners and the reseller who refilled the bottles. Although it is the function of the national court to make such an assessment in accordance with the circumstances of the case, the ruling does not resist providing some interpretative parameters.
The criteria provided by the ruling in this regard are very rich (the greater or lesser clarity of the information added by the label, the practices of the sector, the fact that the original mark is still visible or not) but it gives the impression that does not finish decanting altogether for a “conviction” in the case being prosecuted and prefers to leave the final decision in this regard to the discretion of the national body. It would not be unusual for each party to interpret the ruling in its own way and to have to wait for the decision of the Finnish court to know the outcome.
Author Enrique Armijo Chávarri
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