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18 July 2011

Registered Shape Marks for Reusable Containers and Exhaustion of Rights - CJEU Ruling on Viking Gas A/S v Kosan Gas A/S

Registered Shape Marks for Reusable Containers and Exhaustion of Rights - CJEU Ruling on Viking Gas A/S v Kosan Gas A/S

The Court of Justice of the European Union (CJEU) has released its judgment on whether the proprietor of a registered shape mark for a reusable gas bottle can prevent such bottles from being exchanged by a third party, upon payment, for equivalent containers with an equivalent product in them that does not come from the trade mark proprietor.

The CJEU noted that Kosan’s gas bottles "do not constitute mere packaging […] but have an independent economic value and must be regarded as goods in themselves". On the facts, it was relevant that consumers paid separate amounts for the bottles themselves and the gas. As such, the sale of the bottles, by allowing the realisation of the economic value of the mark (ie, the shape of the bottles), exhausted the exclusive rights granted to the trade mark proprietor (and the exclusive licensee) under Article 5 of Directive 2008/95/EC (the Trade Marks Directive).

Therefore, the CJEU concluded that the sale of Kosan’s bottles exhausts the rights in the registered shape mark and Kosan may not prevent Viking from engaging in its business practice (ie, exchanging, on payment by the end consumers, empty Kosan bottles with other Kosan bottles filled with Viking’s gas) unless Kosan is able to rely on a proper reason pursuant to Article 7(2) of the Trade Marks Directive.

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