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21-09-2011 » Refilling of gas bottles by a competitor: Trademark infringement?

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 gave its view for the first time on that situation. (CJEU, 14 July 2011, Case C-46/10, Viking Gas A/S v. Kosan Gas A/S)

Until that decision, the usual answer which was 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.

The CJEU’s position is different: the Court first considers 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. Therefore, if the purchasers of such bottles were tied to a single gas supplier due to trademark rights, competition would be unduly reduced. The sale of the bottle should be considered as exhausting the original rights and purchasers should have been transferred the right to use those bottles freely, 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 after 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.

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.

Another case is still pending before the CJEU, about the refilling of cans bearing trademarks of the original product, to be exported thereafter. The Advocate General suggested on 14 April 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. That 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 coming from the French law.

Article L. 713-2 of the intellectual property code provides indeed that are prohibited when non-authorized by its owner, the removal or the modification of a trademark regularly affixed on goods.

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 relabeling.

The future will tell us whether the French Courts abandon completely this solution or whether they resist against this new limitation to trademark rights.

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