The Advocate General of the European Court P. MENGOZZI issued his opinion on case C‑291/16 Schweppes SA v Red Paralela SL, Red Paralela BCN SL. The case concerns the following:
The SCHWEPPES trade mark dates back to 1783, when Jacob Schweppe invented the first industrial process for the carbonisation of water, which resulted in a drink then known as ‘Schweppes’s Soda Water’, and founded the company J. Schweppe & Co. in Geneva (Switzerland). Over the years, the SCHWEPPES trade mark has acquired a worldwide reputation in the market for tonic waters.
In Europe, the sign ‘Schweppes’ is registered as a series of national trade marks, word marks and figurative marks, all of which are identical, or practically identical, in all the EEA States.
For many years, Cadbury Schweppes was the sole proprietor of those registered rights. In 1999, it sold the rights relating to the SCHWEPPES trade mark in 13 States of the EEA to The Coca-Cola Company (‘Coca-Cola’). It retained ownership of the rights in 18 other States. (3) In 2009, Cadbury Schweppes, which had since become Orangina Schweppes Group, was acquired by the Japanese group Suntory.
The SCHWEPPES trade marks registered in Spain are owned by Schweppes International Ltd, the English subsidiary of Orangina Schweppes Holding BV, which is the ultimate parent company of the Orangina group. Schweppes, the Spanish subsidiary of Orangina Schweppes Holding, holds an exclusive licence for the exploitation of the marks in Spain.
On 29 May 2014, Schweppes initiated infringement proceedings against the Red Paralela companies, concerning the importation from the United Kingdom and the sale in Spain of bottles of tonic water bearing the SCHWEPPES trade mark. According to Schweppes, the alleged actions are unlawful, in that the bottles of tonic water were put up and placed on the market not by itself or with its consent, but by Coca-Cola, which has no connection with Orangina Schweppes Group. Schweppes maintains that, in those circumstances, and given the fact that the signs and products in question are identical, consumers will be unable to identify the commercial origin of the goods.
The Red Paralela companies are defending those infringement proceedings, arguing exhaustion of the trade mark rights, in so far as concerns products bearing the SCHWEPPES trade mark originating in Member States of the European Union in which Coca-Cola is the proprietor of the mark, resulting from tacit consent. The Red Paralela companies also assert that there are undeniable legal and economic links between Coca-Cola and Schweppes International in the common exploitation of the sign ‘Schweppes’ as a universal mark. (4)
According to the findings made by the referring court, the relevant facts of the present case are as follows:
– despite being the proprietor of the parallel marks in only some EEA States, Schweppes International has promoted a global image of the SCHWEPPES trade mark;
– Coca-Cola, which is the proprietor of the parallel marks registered in the other EEA States, has contributed to maintaining that global trade mark image;
– that global image is a cause of confusion for the relevant public in Spain regarding the commercial origin of goods bearing the SCHWEPPES trade mark;
– Schweppes International is responsible for the European website that deals specifically with the SCHWEPPES trade mark (www.schweppes.eu), which not only provides general information about goods bearing that trade mark, but also contains links to various local websites, in particular the United Kingdom website that is managed by Coca-Cola;
– Schweppes International, which holds no rights in the SCHWEPPES trade mark in the United Kingdom (where the mark is owned by Coca-Cola) refers on its website to the British origins of the mark;
– Schweppes International and Schweppes use the image of the United Kingdom goods in their advertising;
– in the United Kingdom, Schweppes International promotes and provides customer information concerning goods bearing the SCHWEPPES trade mark on social media;
– the presentation of goods bearing the SCHWEPPES trade mark that are sold by Schweppes International is very similar — and in some Member States, such as the Kingdom of Denmark and the Kingdom of the Netherlands, identical — to the presentation of goods bearing the same mark that are of United Kingdom origin;
– Schweppes International, whose registered office is in the United Kingdom, and Coca-Cola coexist peacefully in the United Kingdom;
– following the transfer of some of the parallel marks to Coca-Cola in 1999, the two proprietors of the SCHWEPPES trade marks in the EEA have, in their respective territories, applied in parallel for the registration of new, identical or similar SCHWEPPES trade marks with respect to the same goods (such as, inter alia, the SCHWEPPES ZERO trade mark);
– even though Schweppes International is the proprietor of the parallel marks in the Netherlands, the trade mark is exploited in that country (that is to say, the goods are prepared, bottled and sold) by Coca-Cola in its capacity as licensee;
– Schweppes International makes no objection to the online sale of trademarked goods of United Kingdom origin in several EEA States in which it is the proprietor of the SCHWEPPES trade mark, such as Germany and France. Moreover, goods bearing that trade mark are sold throughout the territory of the EEA through web portals, with no distinction as to origin;
– Coca-Cola has made no opposition, on the basis of its trade mark rights, to Schweppes International’s application for registration of an EU trade mark containing the verbal element ‘Schweppes’.
It was in those circumstances that the Juzgado de lo Mercantil No 8 de Barcelona (Commercial Court No 8, Barcelona, Spain) decided to stay the proceedings before it and to refer the following questions to the Court for a preliminary ruling:
‘(1) Is it compatible with Article 36 TFEU and with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive (EU) 2015/2436 for the proprietor of a trade mark in one or more Member States to prevent the parallel importing or marketing of goods coming from another Member State which bear a trade mark that is identical or practically identical and is owned by a third party, when the said proprietor has promoted a global trade mark image that is associated with the Member State from which originate the goods of which it intends to prohibit the importation?
(2) Is it compatible with Article 36 TFEU and with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive 2015/2436 for goods to be sold under a trade mark, which is well known, within the EU when the registered proprietors maintain throughout the EEA a global trade mark image which gives rise to confusion in the minds of average consumers concerning the commercial origin of the goods?
(3) Is it compatible with Article 36 TFEU and with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive 2015/2436 for the proprietor of national trade marks which are identical or similar in various Member States to oppose the importation into a Member State where it owns the trade mark of goods, identified by a trade mark identical or similar to its own, coming from a Member State in which it is not the proprietor, when at least in another Member State where it is not the proprietor of the trade mark it has expressly or tacitly consented to the importation of those same goods?
(4) Is it compatible with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive 2015/2436 and with Article 36 TFEU for the proprietor A of a trade mark X of a Member State to oppose the importation of goods identified by the said trade mark if those goods come from another Member State where a trade mark identical to X (Y) is recorded as registered by another proprietor B which markets the same and:
– proprietors A and B maintain intense commercial and economic relations, although there is no strict dependency between them regarding the joint exploitation of trade mark X;
– proprietors A and B maintain a coordinated trade mark strategy deliberately promoting vis-à-vis the relevant public an appearance or image of a single and global trade mark; or
– proprietors A and B maintain intense commercial and economic relations, although there is no strict dependency between them regarding the joint exploitation of the trade mark X, and in addition they maintain a coordinated trade mark strategy deliberately promoting vis-à-vis the relevant public an appearance or image of a single and global trade mark?’
The Advocate General’s opinion:
Article 36 TFEU and Article 7(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks preclude the licensee of the proprietor of a national trade mark from invoking the exclusive rights enjoyed by the latter under the law of the Member State in which the trade mark is registered in order to oppose the importing into and/or marketing in that State of goods bearing an identical trade mark which come from another Member State, one in which that trade mark, which was once owned by the group to which both the proprietor of the mark in the importing State and its licensee belong, is owned by a third party which has acquired the rights to it by assignment where, given the economic links existing between the proprietor of the mark in the importing State and the proprietor of the mark in the exporting State, it is clear that the marks are under unitary control and that the proprietor of the mark in the importing State has the possibility of determining directly or indirectly the goods to which the trade mark in the exporting State may be affixed and of controlling their quality.
INTELLECTUAL PROPERTY PLANET 