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 information which would allow it to trade lawfully. The Court was now asked: ‘whether a person who has imported goods bearing the mark into the EEA and offered them for sale there without the consent of the trade mark proprietor, is entitled to defend an action for infringement on the ground that the proprietor of the mark is engaged in conduct calculated to obstruct the free movement of such goods between member states or to distort competition in the EEA market for them.’
Held: The appeal was allowed and the judgment at first instance restored. The Court declined to refer a case to the European Court. Even if proved, the defence put forward by M-Tech would not have succeeded: ‘once the scheme of articles 5 and 7 of the directive are correctly understood, it is clear that the unlawful conduct alleged by M-Tech is collateral to the particular right which Sun is seeking to enforce.’. The drives at issue were not marketed in the EEA until imported by M-Tech without Oracle’s consent, and Oracle has the right to first market their own products within the EEA if they so chose.
It is settled law: ‘(i) that the Directive must be construed as a definitive statement of the harmonised law concerning the rights of trade mark proprietors, and (ii) that it confers on trade mark proprietors a right to control the first marketing of their goods in the EEA save in cases where that right had been unequivocally renounced.’

Lord Walker , Lord Clarke, Lord Sumption, Lord Reed, Lord Carnwath
[2012] UKSC 27, [2012] 1 WLR 2026, UKSC 2010/0203, [2012] ETMR 43, [2012] Bus LR 1631, [2012] 1 WLR 2026, [2012] 3 CMLR 28, [2012] 4 All ER 338, [2012] ECC 27, [2012] Eu LR 727
Bailii, Bailii Summary, SC Summary, SC
Directive 89/104/EC 5 7, Trade Marks Act 1994, EU Treaty 34 36
England and Wales
At First InstanceSun 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 . .
CitedEMI Records v CBS United Kingdom ECJ 15-Jun-1976
ECJ Neither the rules of the Treaty on the free movement of goods nor those on the putting into free circulation of products coming from third countries nor, finally, the principles governing the common . .
CitedTedeschi v Denkavit Commerciale SRL ECJ 5-Oct-1977
ECJ 1. Article 177 is based on a distinct separation of functions between national courts and tribunals on the one hand and the court of justice on the other, and it does not give the court jurisdiction to take . .
CitedCriminal proceedings against Richardt ECJ 4-Oct-1991
The existence, as a consequence of the Customs Union, of a general principle of freedom of transit of goods within the Community does not, as Article 10 of Regulation No 222/77 affirms, have the effect of precluding the Member States from verifying . .
CitedGenerics and Harris Pharmaceuticals v Smith Kline and French Laboratories ECJ 27-Oct-1992
When deciding upon the terms upon which licenses for the use of patented drugs are to be granted, a member state must not take into account issues other than those properly involved in such decisions. Protection of existing licences were not a . .
CitedBristol-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 . .
CitedPhytheron International v Bourdon ECJ 20-Mar-1997
ECJ 1 Preliminary rulings – Jurisdiction of the Court – Limits – Presentation during the procedure before the Court of facts which differ from those described in the order for reference – Obligation of the Court . .
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 . .
CitedSebago and Maison Dubois et Fils SA v GB-Unic SA ECJ 1-Jul-1999
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual . .
Appeal FromOracle America Inc v M-Tech Data Ltd and Another CA 24-Aug-2010
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. . .
ApprovedLevi Strauss and Co and Another v Tesco Stores Ltd and Others ChD 31-Jul-2002
Pumfrey J discussed the principle of European law disallowing so called grey imports in breach of trade mark law, as set out in EMI v CBS, and said that it: ‘could hardly be clearer. It has formed, with the principle of exhaustion, the basis for the . .
CitedZino 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 . .
CitedHoffmann La Roche Ag v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse Mbh ECJ 24-May-1977
The court considered the application of the doctrine of exhaustion of rights in the context of trade marks. The exercise of trade mark rights had to take account of and might be restricted by the prohibitions contained in the Treaty of Rome intended . .
CitedHoffman-La Roche v Centrafarm ECJ 23-May-1978
ECJ (Judgement) 1. It is clear from article 36 of the EEC treaty, in particular its second sentence, as well as from the context, that whilst the treaty does not affect the existence of rights recognized by the . .
CitedMPA Pharma v Rhone-Poulenc Pharma GmbH ECJ 11-Jul-1996
ECJ 1. Although a directive may not of itself impose obligations on an individual and cannot therefore be relied upon as such against him, the national court which applies national law and is required to . .
CitedEurim-Pharm Arzneimittel v Beiersdorf and others ECJ 11-Jul-1996
ECJ 1. Although a directive may not of itself impose obligations on an individual and cannot therefore be relied upon as such against him, the national court which applies national law and is required to . .
CitedLoendersloot v Ballantine and Son and others ECJ 11-Nov-1997
ECJ Article 36 of the EC Treaty – Trade mark rights – Relabelling of whisky bottles. . .
CitedPharmacia 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. . .
CitedCourage Ltd and Crehan v Crehan and Courage Ltd and Others ECJ 20-Sep-2001
The company had leased a public house to the respondent. The lease was subject to a tie, under which the respondent had to purchase supplies from the company. The company came to sue for the price of beer supplied. The respondent asserted that the . .
CitedClass International v Colgate Palmolive ECJ 18-Oct-2005
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 . .
CitedVan 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 . .
CitedKeurkoop 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 . .
CitedHalifax plc etc v Commissioners of Customs and Excise ECJ 21-Feb-2006
ECJ Sixth VAT Directive – Article 2(1), Article 4(1) and (2), Article 5(1) and Article 6(1) – Economic activity – Supplies of goods – Supplies of services – Abusive practice – Transactions designed solely to . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, European, Commercial

Updated: 10 November 2021; Ref: scu.460912