Brands ECJ cases: Loendersloot v Ballantine - parallel imports and re-labelling

United Kingdom
Loendersloot v Ballantine

Ballantine, the Scotch whisky makers, complained about the activities of parallel importers which they contended infringed their trade marks. The importers had:

  • removed labels from bottles and reapplied them or replaced them with copies;

  • removed identification numbers on original packaging; and

  • removed the word "pure" and the name of the official importer from the original labels and in some cases replaced the name.

The case was first heard in Holland which referred the issues to the ECJ. The Court partially upheld Ballantine's claim and confirmed the principles established in the pharmaceutical re-packaging cases, namely that a trade mark owner can object to re-labelling and re-packaging unless:

  • reliance on the trade mark would contribute to the artificial partitioning of the market;

  • the re-labelling cannot affect the original condition of the product;

  • the reputation of the trade mark will not be harmed; and

  • the trade mark owner is informed of the re-labelling prior to the goods being marketed and the goods are appropriately labelled.

In this case Ballantine could prevent the removal of identification numbers, which were placed on products partly to enable products to be traced back to their original lot and also to combat counterfeiting. These were legitimate objectives which did not contribute to the artificial partitioning of the market. On the other hand, removal of the word "pure" and in some cases the importer's name were necessary for the parallel importer to comply with requirements of national laws in the countries into which the product was brought. Use of trade marks to prevent this would amount to an artificial partitioning of the market between Member States.