Court of Justice about the destruction of goods manufactured with consent of the trademark proprietor, but not put on the market with his consent
17-10-2022 Print this page
Article 10(1) of Directive 2004/48 (Enforcement Directive) does not preclude protective measure applied to goods to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market of the EEA without his or her consent: article 10 of Enforcement Directive covers all goods found to be infringing intellectual property rights, without excluding a priori the application of the corrective measure of destruction. Trade mark rights fall within scope of Enforcement Directive. It is for the competent national judicial authorities to determine on a case-by-case basis the measure which, among those laid down in Article 10(1) of Directive 2004/48, may be imposed.
In order for customers to be able to test the goods bearing the HUGO BOSS mark, HUGO BOSS TMM makes available free of charge to sellers and authorised distributors, samples of products or ‘testers’, solely for the purpose of presenting and promoting cosmetics, in bottles identical to those used for their sale under the HUGO BOSS mark. Their external packaging is a uniform bright colour with clear information stating that the samples are not intended for sale, for example, by one of the following indications: ‘not for sale’ (not intended for sale), ‘demonstration’ or ‘tester’. The samples are not placed on the market in the European Economic Area (EEA) either by HUGO BOSS TMM or with its consent.
Preliminairy question:
‘Must Article 10 of Directive [2004/48] be interpreted as precluding the interpretation of a provision of national law to the effect that a protective measure in the form of destruction of goods relates only to goods illegally manufactured or illegally marked, and cannot be applied to goods illegally placed on the market in the [EEA] which cannot be found to have been illegally manufactured or illegally marked?’
Court of Justice EU:
Article 10(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, must be interpreted as: precluding the interpretation of a provision of national law according to which a protective measure in the form of the destruction of goods may not be applied to goods which have been manufactured and to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market in the European Economic Area without his or her consent.
