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. 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 THE PROPRIETOR - NOT PERMISSIBLE
THE ESSENTIAL FUNCTION OF A TRADE MARK IS TO GUARANTEE THE IDENTITY OF THE
ORIGIN OF THE MARKED PRODUCT TO THE CONSUMER OR FINAL USER BY ENABLING HIM
TO DISTINGUISH WITHOUT ANY POSSIBILITY OF CONFUSION BETWEEN THAT PRODUCT
AND PRODUCTS WHICH HAVE ANOTHER ORIGIN . THIS GUARANTEE 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 THE
MARKETING PROCESS TO INTERFERENCE BY A THIRD PERSON , WITHOUT THE
AUTHORIZATION OF THE PROPRIETOR OF THE TRADE MARK , AFFECTING THE ORIGINAL
THEREFORE , THE PROPRIETOR OF A TRADE-MARK RIGHT MAY NOT RELY ON THAT RIGHT
IN ORDER TO PREVENT AN IMPORTER FROM MARKETING A PHARMACEUTICAL PRODUCT
MANUFACTURED IN ANOTHER MEMBER STATE BY THE SUBSIDIARY OF THE PROPRIETOR
AND BEARING THE LATTER ' 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 PACKAGING AND MADE THE TRADE MARK
AFFIXED BY THE MANUFACTURER TO THE INTERNAL PACKAGING VISIBLE THROUGH THE
NEW EXTERNAL WRAPPING , AT THE SAME TIME CLEARLY INDICATING ON THE EXTERNAL
WRAPPING THAT THE PRODUCT WAS MANUFACTURED BY THE SUBSIDIARY OF THE
PROPRIETOR AND RE-PACKAGED BY THE IMPORTER .
REFERENCE 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 BETWEEN
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 , THE LANDGERICHT ( REGIONAL COURT ) HAMBURG REFERRED TO THE COURT FOR
A PRELIMINARY RULING TWO QUESTIONS ON THE INTERPRETATION OF ARTICLE 36 OF
2 THE QUESTIONS WERE RAISED IN CONNECTION WITH PROCEEDINGS BETWEEN TWO
UNDERTAKINGS IN THE PHARMACEUTICALS SECTOR , ONE OF WHICH , THE PLAINTIFF IN
THE MAIN PROCEEDINGS ( HEREINAFTER REFERRED TO AS ' ' PFIZER ' ' ), THE
PROPRIETOR OF A CERTAIN TRADE MARK IN SERVERAL MEMBER 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
TRADE MARK PUT INTO CIRCULATION IN ONE MEMBER STATE , FROM DISTRIBUTING IT IN
ANOTHER MEMBER STATE AFTER RE-PACKAGING IT .
3 THE PRODUCT IN QUESTION , A WIDE-SPECTRUM ANTIBIOTIC CALLED ' ' VIBRAMYCIN '
' , IS MARKETED IN THE FEDERAL REPUBLIC OF GERMANY BY THE GERMAN SUBSIDIARY
OF PFIZER AND IS PROTECTED BY A REGISTERED MARK OF WHICH PFIZER IS THE
PROPRIETOR . THE BRITISH SUBSIDIARY OF PFIZER MANUFACTURES THE SAME PRODUCT
AND MARKETS IT , IN DIFFERENT PACKAGINGS , AT PRICES CONSIDERABLY LOWER THAN
THOSE APPLIED IN THE FEDERAL REPUBLIC OF GERMANY .
4 AFTER INFORMING PFIZER OF ITS INTENTIONS , EURIM-PHARM MARKETED IN THE
FEDERAL REPUBLIC OF GERMANY THE VIBRAMYCIN PURCHASED IN THE UNITED KINGDOM
IN ORIGINAL PACKAGINGS CONTAINING 50 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 THE
FEDERAL REPUBLIC OF GERMANY , EURIM-PHARM ENCLOSED EACH BLISTER STRIP IN A
FOLDING BOX DESIGNED BY IT , WITHOUT ALTERING THE STRIP OR ITS CONTENTS . ON
THE FRONT SIDE OF THE BOX IS AN OPENING COVERED WITH TRANSPARENT MATERIAL
THROUGH WHICH ARE VISIBLE THE WORDS ' ' VIBRAMYCIN PFIZER ' ' APPEARING ON THE
SHEET INCORPORATED IN THE ORIGINAL STRIPS . ON THE BACK OF THE BOX THE
FOLLOWING WORDING HAS BEEN AFFIXED : ' ' WIDE-SPECTRUM ANTIBIOTIC -
MANUFACTURER : PFIZER LTD ., SANDWICH , KENT , GB - IMPORTER : EURIM-PHARM
GMBH , WHOLESALERS OF PHARMACEUTICAL PRODUCTS , 8229 PIDING ; PACKAGED BY
THE IMPORTER : EURIM-PHARM GMBH , 8229 PIDING ' ' . THE IMPORTER INSERTED A
LEAFLET IN THE BOX CONTAINING INFORMATION RELATING TO THE MEDICINAL PRODUCT
, IN ACCORDANCE WITH THE PROVISIONS OF GERMAN LAW .
5 IN ITS ORDER MAKING THE REFERENCE , THE LANDGERICHT HELD THAT THE
OPERATION CARRIED OUT BY EURIM-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 CASE THE HIGHER COURT HAD
TAKEN THE VIEW THAT IN THE CIRCUMSTANCES EXERCISE OF THE TRADE-MARK RIGHT
WAS PRECLUDED BY ARTICLES 30 AND 36 OF THE TREATY , THE LANDGERICHT
SUBMITTED THE FOLLOWING TWO QUESTIONS FOR A PRELIMINARY RULING :
' ' 1 . IS THE PROPRIETOR OF A TRADE MARK PROTECTED IN HIS FAVOUR IN MEMBER
STATE A ENTITLED UNDER ARTICLE 36 OF THE EEC TREATY , IN RELIANCE UPON THIS
RIGHT , TO PREVENT AN IMPORTER FROM BUYING FROM A SUBSIDIARY UNDERTAKING OF
THE PROPRIETOR OF THE TRADE MARK MEDICINAL PREPARATIONS 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 MARKET
UNDER THAT TRADE MARK , FROM RE-PACKAGING THOSE PRODUCTS IN ACCORDANCE
WITH THE DIFFERENT PRACTICES OF DOCTORS IN PRESCRIBING MEDICAMENTS
PREVAILING IN MEMBER STATE A AND FROM PLACING THOSE PRODUCTS ON THE MARKET
IN MEMBER STATE A IN AN OUTER PACKAGING DESIGNED BY THE IMPORTER ON THE
REVERSE SIDE OF WHICH THERE IS A TRANSPARENT WINDOW THROUGH WHICH IS
VISIBLE THE LABEL OF THE PROPRIETOR OF THE TRADE MARK WHICH IS ON THE REVERSE
SIDE OF THE BLISTER STRIP DIRECTLY SURROUNDING THE PRODUCT?
2.IS IT SUFFICIENT , FOR THE PURPOSE OF ESTABLISHING THAT THERE IS AN UNLAWFUL
RESTRICTION ON TRADE AS ENVISAGED BY THE SECOND SENTENCE OF ARTICLE 36 OF
THE EEC TREATY , FOR THE USE OF THE NATIONAL TRADE-MARK RIGHT IN CONNECTION
WITH THE MARKETING SYSTEM ADOPTED BY THE PROPRIETOR OF THE TRADE MARK
OBJECTIVELY TO LEAD TO A PARTITIONING OF THE MARKETS BETWEEN MEMBER STATES ,
OR IS IT NECESSARY ON THE CONTRARY , FOR IT TO BE SHOWN THAT THE PROPRIETOR
OF THE TRADE MARK EXERCISES HIS TRADE-MARK RIGHT IN CONNECTION WITH THE
MARKETING SYSTEM WHICH HE EMPLOYS WITH THE ULTIMATE OBJECTIVE OF BRINGING
ABOUT AN ARTIFICIAL PARTITIONING OF THE 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 V CENTRAFARM ( 1978 ) ECR 1139 ), ALTHOUGH THE
TREATY DOES NOT AFFECT THE EXISTENCE OF THE RIGHTS RECOGNIZED BY THE
LEGISLATION OF A MEMBER STATE IN THE FIELDS OF INDUSTRIAL AND COMMERCIAL
PROPERTY , THE EXERCISE OF THOSE RIGHTS MAY NEVERTHELESS , DEPENDING ON THE
CIRCUMSTANCES , BE SUBJECT TO THE PROHIBITIONS CONTAINED IN THE TREATY .
INASMUCH AS IT CREATES AN EXCEPTION TO THE FUNDAMENTAL PRINCIPLE OF FREE
MOVEMENT OF GOODS IN THE COMMON MARKET , ARTICLE 36 IN FACT PERMITS
DEROGATIONS FROM THAT PRINCIPLE ONLY TO THE EXTENT TO WHICH THEY ARE
JUSTIFIED FOR THE PURPOSE OF SAFEGUARDING THE RIGHTS WHICH CONSTITUTE THE
SPECIFIC SUBJECT-MATTER OF THAT PROPERTY .
7 THE SPECIFIC SUBJECT-MATTER OF THE TRADE-MARK RIGHT IS IN PARTICULAR TO
GUARANTEE TO THE PROPRIETOR THAT HE HAS THE EXCLUSIVE RIGHT TO USE THAT
TRADE MARK FOR THE PURPOSE OF PUTTING A PRODUCT INTO CIRCULATION FOR THE
FIRST TIME AND THEREFORE TO PROTECT HIM AGAINST COMPETITORS WISHING TO TAKE
ADVANTAGE OF THE STATUS AND REPUTATION OF THE TRADE MARK BY SELLING
PRODUCTS ILLEGALLY BEARING THAT TRADE MARK .
8 IN ORDER TO ANSWER THE QUESTION WHETHER THAT EXCLUSIVE RIGHT INVOLVES
THE RIGHT TO PREVENT THE 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 THE IDENTITY OF
THE ORIGIN OF THE TRADE-MARKED PRODUCT TO THE CONSUMER OR FINAL USER BY
ENABLING HIM TO DISTINGUISH WITHOUT ANY POSSIBILITY OF CONFUSION BETWEEN
THAT PRODUCT AND PRODUCTS WHICH HAVE ANOTHER ORIGIN . THIS GUARANTEE 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 THE MARKETING PROCESS TO INTERFERENCE BY A THIRD PERSON , WITHOUT
THE AUTHORIZATION OF THE PROPRIETOR OF THE TRADE MARK , AFFECTING THE
9 IN CONSEQUENCE , THE RIGHT ATTRIBUTED TO THE PROPRIETOR OF THE TRADE MARK
ENABLING HIM TO PREVENT 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 TAKES PLACE IN A CASE SUCH AS THE ONE IN POINT WHERE , ACCORDING TO
THE FINDINGS OF THE NATIONAL COURT 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 THE INTERNAL PACKAGING
AND BY MAKING THE TRADE MARK AFFIXED BY THE MANUFACTURER ON THE INTERNAL
PACKAGING VISIBLE THROUGH THE NEW EXTERNAL WRAPPING .
11 IN SUCH CIRCUMSTANCES THE RE-PACKAGING IN FACT INVOLVES NO RISK OF
EXPOSING THE PRODUCT TO INTERFERENCE OR INFLUENCES WHICH MIGHT AFFECT ITS
ORIGINAL CONDITION AND THE CONSUMER OR FINAL USER OF THE PRODUCT IS NOT
LIABLE TO BE MISLED AS TO THE ORIGIN OF THE PRODUCT , ABOVE ALL WHERE , AS IN
THIS CASE , THE PARALLEL IMPORTER HAS CLEARLY INDICATED ON THE EXTERNAL
WRAPPING THAT THE PRODUCT WAS MANUFACTURED BY A SUBSIDIARY OF THE
PROPRIETOR OF THE TRADE MARK AND HAS BEEN RE-PACKAGED BY THE IMPORTER .
12 THE FACT THAT THE PARALLEL IMPORTER INSERTED IN THE EXTERNAL PACKAGING A
LEAFLET CONTAINING INFORMATION RELATING TO THE MEDICINAL PRODUCT - A FACT
WHICH IS NOT EVEN MENTIONED IN THE QUESTION SUBMITTED - DOES NOT AFFECT
13 THE ANSWER TO THE FIRST QUESTION SHOULD THEREFORE BE THAT ARTICLE 36 OF
THE TREATY MUST BE INTERPRETED AS MEANING THAT THE PROPRIETOR OF A TRADE-
MARK RIGHT MAY NOT RELY ON THAT RIGHT IN ORDER TO PREVENT AN IMPORTER FROM
MARKETING A PHARMACEUTICAL PRODUCT MANUFACTURED IN ANOTHER MEMBER STATE
BY THE SUBSIDIARY OF THE PROPRIETOR AND BEARING THE LATTER ' 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 PACKAGING AND MADE THE TRADE MARK AFFIXED BY THE MANUFACTURER TO
THE INTERNAL PACKAGING VISIBLE THROUGH THE NEW EXTERNAL WRAPPING , AT THE
SAME TIME CLEARLY INDICATING ON THE EXTERNAL WRAPPING THAT THE PRODUCT IS
MANUFACTURED BY THE SUBSIDIARY OF THE PROPRIETOR AND RE-PACKAGED BY THE
14 AS A RESULT OF THE ANSWER GIVEN TO THE FIRST QUESTION AN ANSWER TO THE
SECOND QUESTION IS NO LONGER NECESSARY TO ENABLE THE NATIONAL COURT TO
Decision on costs
15 THE COSTS INCURRED BY THE GOVERNMENT OF THE FEDERAL REPUBLIC OF GERMANY
AND BY THE COMMISSION 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 MAIN PROCEEDINGS ARE CONCERNED , IN THE
NATURE OF A STEP IN THE ACTION PENDING BEFORE THE NATIONAL COURT , THE
DECISION ON COSTS IS A MATTER FOR THAT COURT . Operative part
IN ANSWER TO THE QUESTIONS REFERRED TO IT BY THE LANDGERICHT HAMBURG BY
ARTICLE 36 OF THE TREATY MUST BE INTERPRETED AS MEANING THAT THE PROPRIETOR
OF A TRADE-MARK RIGHT MAY NOT RELY ON THAT RIGHT IN ORDER TO PREVENT AN
IMPORTER FROM MARKETING A PHARMACEUTICAL PRODUCT MANUFACTURED IN
ANOTHER MEMBER STATE BY THE SUBSIDIARY OF THE PROPRIETOR AND BEARING THE
LATTER ' 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 PACKAGING AND MADE THE TRADE MARK AFFIXED BY THE
MANUFACTURER TO THE INTERNAL PACKAGING VISIBLE THROUGH THE NEW EXTERNAL
WRAPPING AT THE SAME TIME CLEARLY INDICATING ON THE EXTERNAL WRAPPING THAT
THE PRODUCT WAS MANUFACTURED BY THE SUBSIDIARY OF THE PROPRIETOR AND RE-
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