Schweppes can not oppose import of Schweppes tonic from the UK, where the trade marks have been transferred to Coca-Cola
21-12-2017 Print this page
The proprietor of a national trade mark cannot oppose to the import of identical goods bearing the same mark originating in another Member State in which that mark is now owned by a third party when following the assignment: the proprietor has actively and deliberately continued to promote the appearance or image of a single global trade mark thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark or there exist economic links between the proprietor and that third party, inasmuch as they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of the trade mark, so that it is possible for them to determine, directly or indirectly, the goods to which the trade marks affixed and to control the quality of those goods.
See the Conclusion A-G earlier. In this case, the question is whether Schweppes, on the basis of its Spanish national trade mark, can oppose the import of bottles of Schweppes tonic from the UK, where the Schweppes trade marks have been transferred to Coca-Cola.
The Court of Justice rules that EU law excludes that the proprietor of a national trade mark can oppose the importation of identical goods containing the same trade mark - originating from Member States where that mark was originally also owned by that holder, but which have since been transferred to a third party - if that holder has consciously contributed to the image that there is one single global trade mark. In this context, the CJEU considers the essential function of the trade mark is to identify the origin ot the trade marked product. If the proprietor has himself compromised or distorted thats function, it can not, in the Court's opinion, rely on the protection of this function to prevent parallel imports from a Member State where the trademark is owned by another party.
In addition, opposition to the abovementioned import is not possible if there are economic links between the two parties. According to the ECJ, this is the case if they coordinate their commercial policy ore exercise joint control over the use of the use of the trademark, so that they have the possibility to directly or indirectly determine the goods on which the brand is affixed and their quality.
IPPT20171220, CJEU, Schweppes v Red Paralela
