## Facts

- A German manufacturer owned an EU trade mark for the word sign DEBRISOFT for medical dressings marketed in the European Union.
- A parallel importer bought DEBRISOFT dressings in Austria and imported them into Germany.
- The importer kept the products in their original internal and external packaging, without opening the packaging.
- The importer affixed a small additional label on an unprinted area of the box that stated the importer’s name and address and included a barcode and pharmaceutical identification number.
- The label did not cover the DEBRISOFT mark, and no other changes were made to the packaging or presentation.
- The trade mark proprietor sued for infringement in Germany, arguing the relabelling triggered conditions associated with parallel-import “repackaging,” including prior notice to the proprietor.
- German courts in the first two instances found for the proprietor; the German supreme civil court referred questions to the CJEU on exhaustion and “legitimate reasons” to oppose resale under EU trade mark law.

## Issues

1. Whether adding a small, informational label to unopened, original packaging can give the trade mark proprietor “legitimate reasons” to oppose further commercialisation of goods after rights are exhausted.
2. Whether such a label constitutes “repackaging” such that parallel-import conditions developed in pharmaceutical cases (including prior notice to the proprietor) must be satisfied.
3. What standard governs whether the label creates a sufficient risk to the trade mark’s guarantee of origin to permit opposition to resale.

## Decision

- The CJEU held the trade mark proprietor could not oppose further commercialisation of the medical device in its original internal and external packaging where the importer added only an additional label of the type described.
- The Court focused on whether the label, by its content, function, size, presentation, and placement, created a risk to the guarantee of origin of the goods.
- Because the label was informational, small, placed on an unprinted area, and did not obscure the mark or alter the packaging’s presentation, it did not create such a risk.
- The Court indicated that failure to provide prior notice or a sample to the proprietor could not, by itself, justify opposition where the label did not threaten the guarantee of origin.
- The matter was returned to the referring national court to resolve the dispute under the CJEU’s interpretation.

## Legal Principles

- EU trade mark rights are exhausted for goods placed on the EU market by or with the consent of the proprietor; the proprietor may oppose resale only for “legitimate reasons,” including where the condition of goods is changed or impaired.
- A proprietor may oppose further commercialisation only where the post-sale intervention is capable of creating a risk to the trade mark’s guarantee of origin.
- A small, non-obscuring, informational label placed on unopened, original packaging generally does not change or impair the goods or their presentation so as to create a risk to origin.
- Parallel-import conditions developed for repackaging cases do not automatically apply to every instance of added labelling; their relevance depends on whether the intervention threatens core trade mark functions (especially origin).

## Conclusion

The CJEU ruled that adding a small importer-identification label to unopened, original packaging did not provide a legitimate basis for the trade mark proprietor to block parallel imports because the label did not create a risk to the trade mark’s guarantee of origin.


Junek Europ-Vertrieb GmbH v. Lohmann & Rauscher Int'l GmbH & Co. KG, Case C-642/16 (C.J.E.U. 2018)