Is the re-use of branded carbonated gas bottles allowed – an EU Court ruling

The European Court has ruled in the case C‑197/21 Soda-Club (CO2) SA, SodaStream International BV v MySoda Oy. The main question, in this case, is whether refilled by someone else carbonated gas bottles infringes the trademark rights of the original producer of the bottles. The dispute has the following background:

SodaStream, a multinational corporation, manufactures and sells carbonation devices that enable consumers to make carbonated water and flavored carbonated beverages from tap water. In Finland, SodaStream markets these devices with a refillable carbon dioxide bottle, which it also sells separately. The companies that form SodaStream are the owners of the European Union trademarks and the national trademarks “SODASTREAM” and “SODA-CLUB”. The specified brands are found on the label and engraved on the aluminum body of these bottles.

MySoda, a company based in Finland, markets in that Member State carbonation devices under the brand name ‘MySoda’ in packaging that does not normally include a carbon dioxide bottle. Since June 2016, MySoda has been offering Finnish-filled carbon dioxide bottles for sale, which are compatible with both its own carbonators and those of SodaStream. Some of these bottles were originally marketed by SodaStream.

After receiving empty SodaStream bottles returned by consumers through distributors, MySoda refills them with carbon dioxide. It replaces the original labels with its own, leaving visible the SodaStream branding engraved on the bottles’ bodies.

For this purpose, MySoda uses two different labels. The first has the MySoda logo and the words “Finnish carbon dioxide for carbonation equipment” in large print in pink, and in small print MySoda’s name as the company that filled the bottle, as well as a link to its website for more detailed information. The second white label has the words “carbon dioxide” in capital letters in five different languages, and among the product information, in small print, MySoda’s name as the company that filled the bottle, as well as a statement that it has no relation to the original supplier of the bottle or his company or the claimed brand that appears on the bottle. In addition, this label contains a link to the MySoda website for more information.

SodaStream initiated a lawsuit for trademark infringement. The Supreme Court of Finland wasn’t sure whether such refilling and use of a trademark was a real infringement and asked the EU Court for clarification.

According to the EU Court:

Article 15, paragraph 2 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark and Article 15, paragraph 2 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States on trademarks

shall be interpreted to mean that:

the proprietor of a trademark who has placed on the market in a Member State good bearing that trademark which are intended for repeated use and refilling, shall not be entitled under these provisions to oppose the further marketing of those goods in that Member State by a reseller, who has refilled them and replaced the original brand label with another label, leaving the original brand visible on those goods, unless this new label gives consumers the false impression that there is an economic relationship between the reseller and the brand owner. This likelihood of confusion must be assessed in light of the information on the product and its new label, as well as distribution practices in the relevant sector and the extent to which consumers are aware of those practices.

(unofficial translation from the Court’s decision)

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