Trade mark proprietor is entitled to oppose, on the grounds of Article 5 of the Trade Marks Directive (2008) and Article 9 of the EU Trade Mark Regulation, a third party removing all the signs identical to that mark and affixing other signs, without its consent, on products placed in the customs warehouse, with a view to importing them or trading them in the EEA where they have never yet been marketed.
Request for a preliminary ruling from the Hof van beroep te Brussel (Belgium). It is stated in the order for reference that Duma and GSI proceeded to make parallel imports in the European Economic Area (EEA) of forklift trucks bearing the Mitsubishi marks, without the consent of Mitsubishi. Duma and GSI have acquired from a company within the Mitsubishi group, outside the EEA, forklift trucks that they bring into EEA territory where they place them under a customs warehousing procedure. They then remove from those goods all the signs identical to the Mitsubishi marks, make the necessary modifications to render those goods compliant with European Union standards, replacing the identification plates and serial numbers with their own signs. They import those goods and then market them both within and outside the EEA.
The referring court asks, in essence, whether Article 5 of the Trade Marks Directive (2008) and Article 9 of the EU Trade Mark Regulation must be interpreted as meaning that the proprietor of a mark may oppose a third party removing all the signs identical to that mark and affixing other signs, without its consent, on products placed in the customs warehouse, such as in the main proceedings, with a view to importing them or trading them in the EEA where they have never yet been marketed.
The CJEU answers this question affirmatively. Otherwise it deprives the proprietor of that trade mark of the benefit of the essential right to control the initial marketing in the EEA of goods bearing that mark. Secondly, the removal of the signs identical to the mark and the affixing of new signs on the goods with a view to their first placing on the market in the EEA adversely affects the functions of the mark. The functions of guaranteeing the origin of the product and its quality, and also the functions relating to investment and advertising have been mentioned by the Court. Thirdly, the conduct as in the main proceedings is contrary to the objective of ensuring undistorted competition.
The CJEU concludes that the proprietor of a mark is entitled to oppose a third party, without his consent, removing all the signs identical to that mark and affixing other signs on the products placed in the customs warehouse, such as in the main proceedings, with a view to importing them or trading them in the EEA where they have never yet been marketed.
IPPT20180725, CJEU, Mitsubishi v Duma
