ECJ Trade marks – Directive 89/104/EEC – Regulation (EC) No 40/94 – Rights conferred by the trade mark – Use of the mark in the course of trade – Importation of original goods into the Community – Goods placed under the external transit procedure or the customs warehousing procedure – Opposition of the trade mark proprietor – Offering for sale or selling goods placed under the external transit procedure or the customs warehousing procedure – Opposition of the trade mark proprietor – Onus of proof.
Class International shipped into Rotterdam a container load of toothpaste bearing the Aquafresh trade mark from a source in South Africa. The court was asked whether Article 5(1) of the Trade Marks Directive and Article 9(1) and (2)(c) of the Community Trade Mark Regulation must be interpreted as meaning that the trade mark proprietor is entitled to oppose the introduction into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not previously put on the market in the Community by that proprietor or with his consent.
Held: Non-Community goods placed under the external transit procedure or the customs warehouse procedure were not to be regarded as ‘imported’ for the purposes of the Trade Marks Directive or the Community Trade Mark Regulation. Use in the course of trade required introduction of the goods into the Community for the purposes of putting them on the market
Citations:
[2006] Ch 154, C-405/03, [2005] EUECJ C-405/03
Links:
Jurisdiction:
European
Cited by:
Cited – Eli Lilly and Company and Another v 8PM Chemist Ltd CA 5-Feb-2008
The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the . .
Cited – Nokia Corporation v Revenue and Customs ChD 27-Jul-2009
Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for . .
Cited – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 July 2022; Ref: scu.231244