Levi Strauss and Co and Another v Tesco Stores Ltd and others: ChD 31 Jul 2002

The trade mark owners sought to restrain the defendants from selling within the EU, articles bearing their mark which had been imported other than through their own channels. The defendants resisted summary judgement after reference to the European Court of Justice, on the grounds that the Regulation was invalid as infringing a basic tenet of European Law, namely the requirement for the free movement of goods.
Held: Though the Trade Marks Act was intended to implement the Directive, this had not been done by a straightforward implementation. European law was supreme. A provision of the Act not providing the full protection awarded by the Directive was unlawful. The respondent also sought to assert its human rights to sell the jeans it had acquire. That point however had been dealt with, and the result could not be described as disproportionate given the additional requirement to balance the rights of the Trade Mark owner. The legislation had not been tested in the European Courts against any conflict with the Treaty. The Treaty rights were not absolute, and again a balance had to be found. The Trade Marks system was not unlawful under the Treaty.

The Honourable Mr Justice Pumfrey
[2000] EWHC 1556 (Ch), [2002] ETMR 95
Bailii
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark, Trade Marks Act 1994, Council Directive No. 89/104/EEC
England and Wales
Citing:
CitedSilhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH ECJ 16-Jul-1998
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. . .
CitedZino Davidoff SA v A and G Imports Ltd ChD 24-May-1999
Though a company could prevent parallel import within the EU, it could not prevent goods sold outside the EU but without restriction on re-sale, being subsequently re-sold into the EU. The removal of a numbering mark did not materially reduce its . .
CitedThoburn v Sunderland City Council etc Admn 18-Feb-2002
Various shopkeepers appealed convictions for breach of regulations requiring food sold by weight to be described in metric amounts. They claimed that the Regulations made under the 1985 Act, to the extent that they were inconsistent with it . .
CitedBritish Airways Plc v Ryanair Limited ChD 25-Oct-2000
The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood.
Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of . .

Cited by:
CitedMastercigars 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.

Intellectual Property, Commercial, European, Human Rights

Updated: 09 November 2021; Ref: scu.174770