Request for a preliminary ruling from the Korkein oikeus (Finland) lodged on 29 March 2021 – Soda-Club (CO2) SA, SodaStream International BV v MySoda Oy

(Case C-197/21)

Language of the case: Finnish

Referring court

Korkein oikeus

Parties to the main proceedings

Appellants: Soda-Club (CO2) SA and SodaStream International BV

Respondent: MySoda Oy

Questions referred

Do the so-called Bristol-Myers Squibb criteria ¹ developed in the Court of Justice’s case-law on repackaging and relabelling in cases of parallel imports, and in particular the so-called condition of necessity, also apply in the case of repackaging or relabelling of goods, which had been put on the market in a Member State by the trade mark proprietor or with its consent, for the purposes of resale in the same Member State?

Where the trade mark proprietor has affixed its trade mark to the cylinder, both on the label and engraved on the neck of the cylinder, when putting a cylinder containing carbon dioxide on the market, do the Bristol-Myers Squibb criteria referred to above, and in particular the so-called condition of necessity, also apply when a third party refills the cylinder with carbon dioxide for the purposes of resale, removes the original label and replaces it with a label bearing that third party’s own trade mark, while at the same time the trade mark of the person that put the cylinder on the market continues to be visible in the engraving on the neck of the cylinder?

In the situation described above, can the view be taken that the removal and replacement of the label bearing the trade mark jeopardises, in principle, the function of the trade mark as a guarantee of the origin of the cylinder, or is it of significance, with regard to the applicability of the conditions for repackaging and relabelling, that

–    it is to be assumed that the target public will perceive the label as referring exclusively to the origin of the carbon dioxide (and thus to the company that refills the cylinder); or

–    it is to be assumed that the target public will perceive the label as also referring, at least in part, to the origin of the cylinder?

If the removal and replacement of the label on CO2 cylinders is to be assessed on the basis of the condition of necessity, can the fact that the labels affixed to the cylinders put on the market by the trade mark proprietor have been accidentally damaged or become detached or have been removed and replaced by a previous refilling company constitute a circumstance on the basis of which the replacement of the labels by a label of the refilling company, a process regularly carried out by the latter, is to be regarded as being necessary for putting the refilled cylinders on the market?

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¹ Judgment of the Court of Justice of 11 July 1996 (Joined Cases C-427/93, C-429/93 and C-436/93, Bristol-Myers Squibb and Others, EU:C:1996:282).