Opinion of Mr Advocate General Capotorti

Mr President,

Members of the Court,

1. The preliminary questions which are to be answered in the present proceedings concern the delicate subject of the limits imposed by Community law (and specifically by Article 36 of the EEC Treaty) on the protection of trade marks. There are three factors in this case: the parallel importation of a medicinal preparation from one Member State into another; the repackaging of the product by or on behalf of the importer; and the reaction of the proprietor of the trade mark in the importing State, who seeks to rely on the exclusive nature of his right in order to prevent the sale of the repackaged product. There are clear points in common with the circumstances which gave rise to Case 102/77, Hoffmann-La Roche v Centrafarm, in which the Court gave judgment on 23 May 1978 ([1978] ECR 1139) and Case 3/78, Centrafarm v American Home Products, in which judgment was given on 10 October of the same year ([1978] ECR 1823). It is understandable therefore that those two cases should have been cited by the parties, who have however drawn different conclusions from them.

2. It is appropriate to state the salient facts in greater detail. The German undertaking Eurim-Pharm imported from the United Kingdom into the Federal Republic of Germany an antibiotic called Vibramycin, produced by the British subsidiary of the multinational company Pfizer. In Germany, the same medicinal preparation is sold by the German subsidiary of Pfizer and is protected by a registered trade mark of which the parent company is the proprietor. The Vibramycin tablets are packed by the manufacturer in blister strips, on the reverse of which are printed the words Vibramycin Pfizer; each strip contains five tablets. In turn, the strips are enclosed in packs of two (10 tablets) or of ten (50 tablets).

3. It is recognized that, in principle, the proprietor of an industrial property or commercial property right protected by the legislation of a Member State may not rely on that legislation in order to oppose importation of a product already offered for sale on the market of another Member State by or on behalf of the proprietor of the right or with his consent. The case-law of this Court in that respect is clear; I shall confine myself to mentioning the judgments of 31 October 1974 in Case 16/74, Centrafarm v Winthrop ([1974] ECR 1183), of 10 October 1978 in Case 3/78, Centrafarm v American Home Products (mentioned above) and of 20 January 1981 in Joined Cases 55 and 57/80, Musik-Vertrieb membran GmbH ([1981] ECR 147). Any measure which prevents a parallel importer from selling a product lawfully acquired by him in another Member State is intrinsically incompatible with Article 30 of the EEC Treaty, inasmuch as it has an effect equivalent to a quantitative restriction on imports, a fact of which the court of trial showed itself to be well aware.

4. In my opinion, the abovementioned judgment of 23 May 1978 in the case of Hoffmann-La Roche v Centrafarm provides all that is necessary for a solution to the problem described above. I note that in that case too the preliminary questions arose from a situation where a medicinal preparation had been imported from Great Britain into the Federal Republic of Germany and repackaged by the importer, and opposition proceedings had been initiated against the latter, under German trademark legislation, by the subsidiary of the multinational group to which the British manufacturer of the product also belonged. But the repackaging had affected the entire package (bottles and packets) and the importer had printed the manufacturer's trade mark on the new wrapping. The Court, having made clear what it was that had to be established (specifically whether the repackaging of a trademarked product... is capable of affecting the original condition of the product; paragraph 9 of the decision), admitted the possibility of the repackaging being undertaken in such a way that the original condition of the product cannot be affected and added this may be so where, for example, the proprietor of the trade mark has marketed the product in a double packaging and the repackaging affects only the external packaging, leaving the internal packaging intact... (paragraph 10 of the decision). In the operative part of the judgment, the Court considered that The proprietor of a trademark right which is protected in two Member States at the same time is justified, within the meaning of the first sentence of Article 36 of the EEC Treaty, ... in preventing a product to which the trade mark has lawfully been applied in one of those States from being marketed in the other Member State after it has been repacked in new packaging to which the trade mark has been affixed by a third party. But immediately thereafter it stated: However, such prevention of marketing constitutes a disguised restriction on trade between Member States within the meaning of the second sentence of Article 36 where: It is established that the use of the trademark right by the proprietor, having regard to the marketing system which he has adopted, will contribute to the artificial partitioning of the markets between Member States; It is shown that the repackaging cannot adversely affect the original condition of the product; The proprietor of the mark receives prior notice of the marketing of the repackaged product; It is stated on the new packaging by whom the product has been re-packaged.

5. The view which I have taken differs of course from that held by the national court which in this case found that there had been an infringement of German trademark law and adhered to a particular notion of the specific subject-matter of trade marks, namely that it includes the presentation chosen by the manufacturer for his product no less than the intrinsic characteristics of the product. In that regard, I confine myself to pointing out that the Court is not bound by that view and that, inasmuch as the Court is here concerned with the interpretation of Article 36 of the EEC Treaty, the objective and the function of the trade mark must be determined in the restrictive manner laid down in the case-law of the Community, in the light of the principle of the free movement of goods.

6. It has been seen that, according to the operative part of the judgment of 23 May 1978 in the case of Hoffmann-La Roche v Centrafarm, the first requirement that must be fulfilled before there can be any talk of a disguised restriction on trade between Member States is proof that the exercise of the trademark right on the part of the proprietor thereof, having regard to the marketing system adopted by him, would contribute to the artificial partitioning of the national markets within the Community. In its second question, the Landgericht Hamburg is concerned essentially to establish whether it is sufficient to demonstrate that a partitioning of the markets has taken place as an objective consequence of the exercise of the trademark right or whether a subjective factor is also necessary, namely an intention on the part of the proprietor of the right to bring about such partitioning.

7. In view of the foregoing considerations I suggest, in conclusion, that the Court should reply as follows to the preliminary questions submitted by the Landgericht Hamburg by its order of 5 November 1980.

1 Translated from the Italian.