Europa Free movement of goods – Industrial and commercial property – Trade mark – Similar products protected in different Member States by identical marks or marks liable to be confused belonging to two entirely separate undertakings – Opposition of the proprietor of the mark in one Member State to the importation of products marketed by the other undertaking under its own trade mark – Whether permissible – Common origin of the two marks prior to expropriation resulting in separate proprietors being entitled to use the trade mark – Not relevant
(EEC Treaty, Arts 30 and 36)
Articles 30 and 36 of the EEC Treaty do not preclude national legislation from allowing an undertaking which is the proprietor of a trade mark in a Member State to oppose the importation from another Member State by an undertaking which is legally and economically independent of it and without its consent of similar products lawfully bearing in the latter State an identical trade mark or one which is liable to be confused with the protected mark, even if the mark under which the goods in dispute are imported originally belonged to a subsidiary of the undertaking which opposes the importation and was acquired by a third undertaking following the expropriation of that subsidiary.
From the date of expropriation and notwithstanding their common origin, each of the marks independently fulfilled its function, within its own territorial field of application, of guaranteeing that the marked products originated from one single source.
Citations:
C-10/89, [1990] 3 CMLR 571, [1990] EUECJ C-10/89, [1990] ECR I-3711
Links:
Cited by:
Cited – Scandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.
European
Updated: 01 June 2022; Ref: scu.160191
