The claimant sought to prevent import from China of its own second hand computer disc drives said to infringe its trade marks. It had granted an exclusive licence for the sale of its equipment in Europe and alleged that this was a parallel import. The defendant proposed defences under European law regarding the non-publication of serial mark trackers, abuse of article 5TMD rights, and breach of competition restrictions (81EC).
Held: The defendant’s appeal against summary judgment succeeded. The claimant’s description of the position between the infringement proceedings and the agreements with distributors and resellers as ‘a complete disconnect’ did not take account of the defendant’s allegation that the agreements with distributors and resellers form part of an overall scheme for excluding secondary traders from the market. The Court of Justice had not so far held that Article 81 cannot be used in trade mark cases.
Judges:
Neuberger LJ MR, Arden, Tomlinson LJJ
Citations:
[2010] EWCA Civ 997, [2010] ETMR 64, [2011] FSR 2, [2011] ECC 4, [2011] Eu LR 117
Links:
Statutes:
EC Treaty 28 30 81EC, Directive 89/104/EC 5 7
Jurisdiction:
England and Wales
Citing:
Appeal from – Sun Microsystems Inc v M-Tech Data Ltd and Another PatC 25-Nov-2009
The claimant manufactured computer disk drives, marketing them under its trade marks. It complained that the defendant had resold them within the European Economic Area in breach of its rights.
Held: Summary judgment was granted, and an order . .
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 – Bristol-Myers Squibb and others v Paranova ECJ 11-Jul-1996
ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where . .
Cited – Pharmacia and Upjohn SA, formerly Upjohn SA v Paranova A/S ECJ 12-Oct-1999
ECJ Trade-mark rights – Pharmaceutical products – Parallel imports – Replacement of a trade mark. . .
Cited – Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another ECJ 8-Apr-2003
The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights.
Held: The burden of proving . .
Cited by:
Appeal From – 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, European
Updated: 22 August 2022; Ref: scu.421587