SodaStream: exhaustion of trademark right in gas bottle refills

Can one refill a refillable SODASTREAM carbonated gas bottle and put one’s own label on it, while the engraved brand SODASTREAM also remains on the bottle? Yes, so the Court of Justice ruled on 27 October 2022 in the Finnish case SodaStream/MySoda.

The first sale of the gas bottle causes that SodaStream's trademark right is exhausted. The buyer can freely dispose of that gas bottle, exchange it or have it filled by another company. The trademark owner cannot stop MySoda from collecting, filling and reselling empty SODASTREAM bottles with a new label. At least: as long as consumers don’t assume from this new label that the reseller (MySoda) is economically connected to the trademark holder (SodaStream). Apart from that: if it were unsafe to refill those bottles, the trademark owner would of course have a legitimate reason to act. But that is not at issue here.

What does such a new label look like in practice? It must not imply to the average consumer an economic link between the reseller and the trademark owner. All circumstances are relevant, first of all: the layout of the new label (size of label and letters, place on the bottle). Also important: the location and size of the brand engraved in the bottle. From this combination, the consumer should understand that that the trademark owner has no control (anymore) over the contents of the bottle. Sector practices may also play a role here: is it commonly known that this kind of packaging is professionally refilled? If so, perhaps a somewhat smaller disclaimer on the new label would suffice.

We already knew from the Viking case that refilling and reselling reusable packaging does not constitute a trade mark infringement. Now we also know the same for bottles on which the mark is permanently affixed and remains visible even after refilling. The trademark owner who wants to keep control over the filling of products would do well to consider a system of loaning in which ownership of the packaging remains with the manufacturer.

Maarten Haak