Paris court upholds trademark exhaustion for bundled products

Republic Technologies International SAS and Republic Technologies NA LLC, part of the Republic Technologies International group (together, RTI), own several French and European trademarks, including the French word mark ‘OCB’ in Class 34 (cigarette papers in booklets, reams, and rolls).

Those trademark owners discovered that, from September 2022, Pera, an independent Intermarché franchisee, was selling transparent pouches containing authentic OCB rolling papers bundled together with competing Beuz and Belflam products. After a cease-and-desist letter remained unsuccessful and an infringement seizure carried out at the premises of the supplier, Distri-Concept, proved unfruitful, RTI brought proceedings before the Paris Judicial Court for trademark infringement and, alternatively, unfair competition.

RTI argued that bundling OCB products with competitors’ products in new transparent pouches constituted illegal repackaging according to the relevant European case law. In particular, they referred to the Bristol-Myers Squibb (case No. C-427/93) judgment of the Court of Justice of the European Union of July 11 1996, which defines the conditions for lawful repackaging.

They argued that the cumulative conditions for legal reconditioning were not met, so that:

• Distri-Concept had not informed them in advance;

• Reconditioning was unnecessary for market access;

• The original state of the products could be altered by moisture or heat trapped in the plastic;

• The identity of the refurbisher was not specified; and

• This presentation damaged the reputation of the earlier mark ‘OCB’.

RTI argued that the defendants had gone beyond the mere resale of genuine goods by creating a new commercial presentation combining competing products under a single transparent package. According to RTI, this altered the essential function of the trademark by depriving the proprietor of control over the way its products were presented to consumers.

They also invoked the enhanced protection granted to their trademark with a reputation under Article L. 713-3 of the Intellectual Property Code (IPC), claiming that the “wild” packaging was detrimental to the image of the ‘OCB’ trademark, No. 1301539. They asked for an injunction, the recall and destruction of the stock, the publication of the judgment, and €100,000 in damages.

Pera, on the other hand, argued that the Bristol-Myers Squibb case law concerned pharmaceutical products and could not be transposed to rolling papers, which are not sensitive products requiring a particular presentation. It further maintained that the original packaging of the OCB remained fully visible inside the transparent pouch, so that there was no repackaging.

Pera also argued that consumers remained perfectly able to identify the commercial origin of each product, since every pack retained its original packaging and trademark. The transparent pouch merely grouped together independent products without modifying their presentation or suggesting any commercial link between the respective brands. It also disputed any likelihood of confusion because the consumer, characterised as normally informed and reasonably observant and circumspect, could see the distinct marks and packaging through the transparent plastic. Alternatively, it sought to transfer all responsibility to Distri-Concept.

The Paris Judicial Court (3rd Chamber, 2nd Section), in its judgment of June 26 2026, rejected all the requests made.

Regarding trademark infringement, the court first examined whether the defendants could rely on the principle of exhaustion under Article L.713-4 of the IPC. It considered that placing several branded products in the same transparent plastic pouch did not amount to “repackaging” within the meaning of the Bristol-Myers Squibb case law.

The court observed that none of the original OCB packaging had been opened, replaced, or modified. Each product remained individually packaged and perfectly identifiable. As a result, RTI failed to establish that the condition of the products had been altered or that there existed a legitimate reason allowing the trademark owner to oppose their further commercialisation.

The court also rejected RTI’s argument based on the reputation of the ‘OCB’ trademark. Although the trademark enjoys a strong reputation in France, the judges considered that rolling papers are everyday consumer goods, generally marketed in ordinary retail conditions rather than in a luxury environment. Their presentation alongside competing products was therefore not capable of damaging the image or reputation of the trademark.

The court then examined the alternative claim based on unfair competition. It recalled that the mere marketing of competing products does not constitute wrongful conduct unless it creates a likelihood of confusion or amounts to unfair commercial practices.

In the present case, the transparent packaging allowed consumers to distinguish each product easily. The respective trademarks, colours, and packaging remained fully visible, making it possible for consumers to identify immediately the commercial origin of each item. Since no risk of confusion was established, the court rejected the unfair competition claim.

This decision clarifies the limits of the repackaging defence in French trademark practice. The court interpreted the term “repackaging” restrictively, requiring an actual modification of the original packaging of the product rather than a simple aggregation in a secondary transparent pouch. Right holders wishing to object to bundling must demonstrate that the original packaging has been altered or that the condition of the product is affected.

That decision also provides useful guidance on the extent of reputational damage in relation to trademarks. The court recognises that OCB enjoys a reputation in France but at the same time stresses that any unauthorised association with competing products does not constitute an attack on this reputation. For goods sold through mass-market retail channels under ordinary retail conditions, the threshold for proving reputational damage seems high.

In practice, brand owners distributing through independent retailers should review their distribution and franchise agreements in order to ensure control over how their products are presented or bundled, anticipating, contractually speaking, specific prohibitions on packaging.

Conversely, retailers and distributors can take comfort in this decision: transparent multi-brand packs that preserve the integrity and visibility of each brand’s original packaging are unlikely to trigger trademark infringement or unfair competition liability, provided there is no confusion about the origin of the products in question.

More broadly, the judgment confirms a pragmatic approach to trademark exhaustion in France. It suggests that merely grouping genuine products together will not deprive trademark owners of the exhaustion defence unless the original presentation of the goods is genuinely altered or consumers are likely to perceive a commercial connection between competing brands.