The CJEU broadens the scope of protection of registered trademarks
In a recent judgment, the Court determined that the removal of a registered trademark from the original products could constitute an infringement
In case C-129/17, Mitsubishi v. Duma and GS International BVBA, the Court of Justice of the European Union (CJEU) concluded that the proprietor of a registered trademark is entitled to oppose removal of the registered trademark from its goods and its replacement with other signs in order to import them into the EEA.
In the case analyzed, the defendants Duma and GSI acquired forklift trucks from a Mitsubishi group company outside the EEA. Once in the customs warehouse, they removed the Mitsubishi trademarks from these products, replacing the identification plates and serial numbers with their own marks and made the necessary changes to ensure that the goods complied with EU standards.
Mitsubishi argued that the removal of its distinctive signs infringed its trademark rights, in particular, the proprietor’s right to control the first placing on the market in the EEA of the goods bearing its registered trademarks. It held that the exhaustion of the rights conferred by the mark did not apply to goods from outside the EEA.
The defendants argued that they should be regarded as the manufacturers of the forklift trucks that they purchased outside the EEA, because they made changes to them in order to render them compliant with EU regulations and that they were therefore entitled to affix their own signs.
What is exhaustion of the right conferred by a trademark?
It constitutes a limitation on the exclusive right conferred by a registered trademark that prevents the proprietor prohibiting its use on products marketed in the EEA under that trademark by the proprietor or with its consent. However, this limitation is not applicable to goods from outside the EEA, in relation to which the proprietor of the trademark can control the first placing in the market of its goods in the EEA.
The CJEU had already held in the July 8, 2010 Portakabin(C-558/08) judgment that where a reseller, without the trademark proprietor’s consent, removes the mark from the goods and replaces it with a label with the name of the reseller, the proprietor is entitled to prevent the distributor from using that mark to advertise such resale, since it negatively affects the essential function of the trademark.
What new features does the judgment introduce?
This new case broadens the protection afforded to trademarks in concluding that removing the mark from the original goods in order to sell them in the EEA infringes the registered trademark. This conclusion is not affected by the fact that the marks were removed when the goods were still in the customs warehouse, since those operations were carried out to import the goods into the EEA.
Garrigues Intellectual Property Department