Vikings to go Luxembourg: it's a gas -- and the scent of perfume too

Yesterday the peaceful, leafy glades of Luxembourg were subjected to a Viking invasion. Well, it was the day of the Advocate General's Opinion in Case C-46/10 Viking Gas A/S v BP Gas A/S, a reference for a preliminary ruling from the Højesteret (Denmark), lodged on 28 January 2010. The court had some excellent questions to ask, on the important issue of the application of trade mark law to the refilling of gas bottles. The court asked:

"Is Article 5, in conjunction with Article 7, of ... Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: 

1. A sells gas in so-called composite bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and an EC trade mark. A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark. 

2. On first purchase of a composite bottle filled with gas from one of A's dealers the consumer also pays for the bottle, which thus becomes the consumer's property. 

3. A refills the composite bottles by a procedure under which the consumer goes to one of A's dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by A. 

4. B's business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in 1., by a procedure under which consumers go to a dealer associated with B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by B. 

5. When the composite bottles in question are filled with gas by B, adhesive labels are attached to the bottles indicating that the filling was undertaken by B? 

If it may be assumed that consumers will generally receive the impression that there is an association between B and A, is this to be regarded as significant for the purpose of answering Question 1? 

If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of A, which is still visible irrespective of any adhesive labels affixed by B? 

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature A's word and/or figurative mark, A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? 

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to B directly and there:
(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by B, or
(b) on payment, has a composite bottle which he has brought filled with gas?"

Infuriatingly again, the Opinion has been translated into a smattering of languages, including Latvian (and indeed, why not?) -- but not into English. Advocate General Juliane Kokott's words, French-style, are as follows:

"Le titulaire du droit de marque sur une bouteille de gaz enregistrée en tant que marque ne peut pas s’opposer à la vente de gaz, par une autre entreprise, dans des exemplaires de cette bouteille que le titulaire a mis dans le commerce précédemment lorsqu’il est indiqué de façon suffisamment claire que le gaz vendu ne provient pas du titulaire et qu’il n’existe pas de lien avec ce dernier.".

With the assistance of Google's online translation service this comes out in English as

"The proprietor of the mark on a gas cylinder registered as a trade mark cannot oppose the sale of gas through another company, in copies of this bottle that the holder has previously put on the market when it is stated clearly enough that the gas sold does not come from the holder and there is no link with it".

Unable to study the reasoning, the IPKat can at least appreciate the conclusion.  Without a link, there can be no likelihood of confusion, no association and no taking of unfair advantage or inflicting of detriment, without due cause, regarding the reputation or distinctive character.  Merpel's not so happy though: if, as is generally going to be the case unless gas bottles are going to be filled with fizzy drink, the alleged infringement is an Article 5(1)(a) type -- same mark, same goods -- it shouldn't be necessary to have to show a link unless the Court of Justice's thinking in Google France has spread beyond the use of trade marks as keywords.  Can some kind reader please advise?

Both Kats ask the following question: "If you substitute the word "perfume" for "gas", does the Advocate General suggest that we can put a smell-alike scent in an empty Chanel No.5 bottle and stick a big label on it that says that the contents do not come from Chanel and that there is no link with it?"

Viking Cat cake here
Make your own gas here