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, saying that the respondents had consented to the import within the Directive.
Held: The appeal succeeded. The Cuban authority had given its consent to resales within the EU: ‘HSA were prepared not only to tolerate but to allow small commercial quantities to be purchased by foreigners within Cuba for them to take out and re-sell abroad. . . this is exactly what HSA wanted – the royalty, the desire for hard currency, and the pricing in Cuba having regard not only to home market conditions but prices in export markets all confirm this. ‘
Jacob LJ ‘the public would be surprised to know (and perhaps somewhat resentful of the fact) that the law of the EEA is such that if genuine goods are available outside Europe much cheaper than they are here, traders cannot buy them and import them for sale here, unless the trade mark owner has consented. Even though the trade mark tells the truth, its use can be prevented without that consent. ‘
Judges:
Chadwick LJ, Jacob LJ, Lloyd LJ
Citations:
[2007] EWCA Civ 176, [2007] RPC 2
Links:
Statutes:
Trade Marks Directive 89/104 89/104
Jurisdiction:
England and Wales
Citing:
Cited – Deutsche Grammophon Gesellschaft Mbh v Metro-Sb-Grossmarkte Gmbh and Co Kg ECJ 8-Jun-1971
ECJ Under article 177 of the court, when giving a preliminary ruling, is entitled only to pronounce on the interpretation of the treaty and of acts of the institutions of the community or on their validity but . .
Cited – Centrafarm Bv and Others v Winthorp Bv ECJ 31-Oct-1974
(Free Movement Of Goods) . .
Cited – Centrafarm Bv and Others v Sterling Drug ECJ 31-Oct-1974
(Free Movement Of Goods) . .
Appeal from – Mastercigars Direct Ltd v Hunters and Frankau Ltd and others ChD 10-Mar-2006
Trade mark dispute concerning the import into the UK of many well-known brands of hand-rolled Cuban cigars. . .
Cited – Merck and Co. Inc. v Stephar Bv And Petrus Stephanus Exler. ECJ 14-Jul-1981
A patentee had no IP right in the EU member state where he first marketed the goods and so had no right to ‘exhaust’ associated rights. . .
Cited – Roche Products Ltd and Another v Kent Pharmaceuticals Ltd CA 20-Dec-2006
The defendant appealed summary judgment in a trade mark infringement case based on parallel imports of ACCU-CHEK blood testing strips for diabetics. The defendant said that the products were ‘CE’ marked and therefore intended for sale within the EU. . .
Cited – Honda Motor v Neesam ChD 2006
. .
Cited – Zino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
Cited – Hewlett-Packard Development Company Lp and Another v Expansys UK Ltd ChD 14-Jul-2005
Application for summary judgment in trade mark infringement case. . .
Cited – 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 . .
Cited – Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd. ChD 14-Jul-2005
The claimant attempted to prevent the grey import from sales over the internet.
Held: The defendants had failed to establish any implied consent to the importation, and the attempt succeeded. . .
Cited – Sony Computer Entertainment v Electricbirdland ChD 17-Aug-2005
. .
Cited – Adidas v Microhaven 2003
. .
Cited – Quiksilver v Charles Robertson ChD 2004
. .
Cited – Keurkoop Bv v Nancy Kean Gifts Bv ECJ 14-Sep-1982
ECJ The protection of designs comes under the protection of industrial and commercial property within the meaning of article 36 inasmuch as its aim to define exclusive rights which are characteristic of that . .
Cited – IHT Internationale Heiztechnik v Ideal-Standard (Rec 1994,p I-2789) (Judgment) ECJ 22-Jun-1994
. .
Cited – CNL-SUCAL v HAG (HAG 2) ECJ 17-Oct-1990
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 . .
Cited – Van Zuylen Freres v Hag Ag. (Free Movement Of Goods ) ECJ 3-Jul-1974
European Article 36 only admits derogations from the free movement of goods to the extent that such derogations are justified for the purpose of safeguarding rights that constitute the specific subject matter of . .
Cited by:
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 13 October 2022; Ref: scu.249912