The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 8 April 2011

Vikings to go Luxembourg: it's a gas -- and the scent of perfume too

Yesterday the peaceful, leafy glades of Luxembourg were subjected to a Viking invasion. Well, it was the day of the Advocate General's Opinion in Case C-46/10 Viking Gas A/S v BP Gas A/S, a reference for a preliminary ruling from the Højesteret (Denmark), lodged on 28 January 2010. The court had some excellent questions to ask, on the important issue of the application of trade mark law to the refilling of gas bottles. The court asked:
"Is Article 5, in conjunction with Article 7, of ... Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: 
1. A sells gas in so-called composite bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and an EC trade mark. A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark. 
2. On first purchase of a composite bottle filled with gas from one of A's dealers the consumer also pays for the bottle, which thus becomes the consumer's property. 
3. A refills the composite bottles by a procedure under which the consumer goes to one of A's dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by A. 
4. B's business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in 1., by a procedure under which consumers go to a dealer associated with B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by B. 
5. When the composite bottles in question are filled with gas by B, adhesive labels are attached to the bottles indicating that the filling was undertaken by B? 
If it may be assumed that consumers will generally receive the impression that there is an association between B and A, is this to be regarded as significant for the purpose of answering Question 1? 
If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of A, which is still visible irrespective of any adhesive labels affixed by B? 
If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature A's word and/or figurative mark, A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? 
If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to B directly and there:
(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by B, or
(b) on payment, has a composite bottle which he has brought filled with gas?"
Infuriatingly again, the Opinion has been translated into a smattering of languages, including Latvian (and indeed, why not?) -- but not into English. Advocate General Juliane Kokott's words, French-style, are as follows:
"Le titulaire du droit de marque sur une bouteille de gaz enregistrée en tant que marque ne peut pas s’opposer à la vente de gaz, par une autre entreprise, dans des exemplaires de cette bouteille que le titulaire a mis dans le commerce précédemment lorsqu’il est indiqué de façon suffisamment claire que le gaz vendu ne provient pas du titulaire et qu’il n’existe pas de lien avec ce dernier.".
With the assistance of Google's online translation service this comes out in English as
"The proprietor of the mark on a gas cylinder registered as a trade mark cannot oppose the sale of gas through another company, in copies of this bottle that the holder has previously put on the market when it is stated clearly enough that the gas sold does not come from the holder and there is no link with it".
Unable to study the reasoning, the IPKat can at least appreciate the conclusion.  Without a link, there can be no likelihood of confusion, no association and no taking of unfair advantage or inflicting of detriment, without due cause, regarding the reputation or distinctive character.  Merpel's not so happy though: if, as is generally going to be the case unless gas bottles are going to be filled with fizzy drink, the alleged infringement is an Article 5(1)(a) type -- same mark, same goods -- it shouldn't be necessary to have to show a link unless the Court of Justice's thinking in Google France has spread beyond the use of trade marks as keywords.  Can some kind reader please advise?

Both Kats ask the following question: "If you substitute the word "perfume" for "gas", does the Advocate General suggest that we can put a smell-alike scent in an empty Chanel No.5 bottle and stick a big label on it that says that the contents do not come from Chanel and that there is no link with it?"

Viking Cat cake here
Make your own gas here


Anonymous said...

We seem rapidly to be approaching the point, if we have not already reached it, where the CJEU's case law on Article 5(1)(a) of the Directive puts the EU and its Member States in breach of Article 16(1) of TRIPS ("In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.") How long before a trade mark owner persuades its country's government to lodge a WTO complaint?

Dan Ballard said...

I don't have an answer under EU law.

You may be interested to know that in the US some of our states have enacted “container" laws that proscribe the refilling of branded containers by another.

The California version provides that brand owners who sell a product in a container can impress or produce upon that container what they use as a brand identifier [which does not have to be protectable trademark]. The law then prohibits all others from “[p]ossessing, using, or filling with any substance any container … [o]bliterating or concealing the brand on any container, supplies or equipment [and] … [s]elling, buying, giving, taking or otherwise trafficking in any container, equipment, or supplies.” See Cal B&P Code 14425 et seq. at .

The law is normally used to prevent counterfeiters from trafficking in branded containers and to prevent reverse passing off [refilling the old-style glass milk bottles, for example, with some other dairy’s milk].

I think “impressed or produced thereon” means a brand owner must literally etch its brand identifier onto the container.

Steph said...

This has a deliciously ironic context, considering Luxembourg's ECJ used to be one of my very best customers for refill laser toner cartridges in the early 90s.

Anonymous said...

It is probably just me as a patent attorney who cannot think straight on a late friday afternoon, but isn't branding a filled composite gas bottle quite a hazardous thing to do?

Anonymous said...

This sounds like a similar situation, and a similar outcome, to the UK litigation of some 20 years ago relating to a third party supplier of refilled genuine "Sodastream" CO2 gas bottles, where the refiller not only supplied the refilled bottles in different packaging, but also repainted the refilled recharged gas cylinders a different colour to positively distinguish them from the original product.

It appears that, as a consequence, Sodastream changed their business model from outright sale of the gas bottles to the end user, to licencing the use of the bottles, the ownership of which now remains with the original supplier.

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