LexGo

Debranding Before Import Not Allowed
09/08/2018

 

In a recent decision, Mitsubishi v Duma Forklifts and G.S. International (C-129/17), the Court of Justice of the European Union (CJEU) confirmed that ‘debranding’ products before importing them into the EEA, without the trade mark proprietor’s consent, is not allowed.

Facts

The facts of the case can be summarized as follows.

Two Belgian companies, Duma and GSI, purchase MITSUBISHI forklifts outside the European Economic Area (EEA), which they import into the EEA under a customs warehousing procedure. Before doing so, however, they remove from the goods all MITSUBISHI trade marks (‘debranding’), make the necessary modifications to render the goods compliant with EU standards, and replace the identification plates and serial numbers with their own signs. Afterwards, the modified goods are imported into and marketed in the EEA.

According to Duma and GSI, Mitsubishi cannot rely on its trade mark rights in relation to the debranded products, as the MITSUBISHI trade mark is no longer affixed to them. Mitsubishi, however, which did not consent to the modification and import of its goods into the EEA, argued that its trade mark rights are adversely affected and started proceedings in Brussels against the two companies. The Brussels Court of Appeal requested a preliminary ruling from the Court of Justice of the European Union (CJEU).

Judgment

The CJEU sided with Mitsubishi and ruled that a trade mark proprietor has the right to oppose the removal by third parties of its trade marks and their replacement with other marks, even if the products formed the object of a customs warehousing procedure, before being imported into and marketed in the EEA.

Trade mark proprietors indeed have the right to control the initial marketing in the EEA of goods bearing their trade marks. If the goods are debranded without their consent, they are unable to control the initial marketing, which adversely affects the trade mark's functions.

The fact that the trade mark proprietor’s goods are placed on the market before the proprietor is able to do so while using his trade mark, with the result that consumers become familiar with the goods before associating them with the trade mark, is likely to substantially impede use of the trade mark by the proprietor to acquire a reputation likely to attract and retain consumers or promote sales or as an instrument of commercial strategy.

The CJEU held that Duma and GSI’s aim was to circumvent the proprietor’s right to prohibit the import of its branded products without its consent, which is contrary to the objective of ensuring undistorted competition.

According to the CJEU, it does not matter that debranding took place when the goods were still under the customs warehousing procedure, since the operation was carried out for the purpose of importing the goods into and placing them on the market in the EEA.

Related : Nautadutilh Avocats Luxembourg Sŕrl ( Mr. Vincent Wellens )

[+ http://www.nautadutilh.com]


Click here to see the ad(s)
All articles Intellectual property law

Lastest articles Intellectual property law

Update on the Implementation of Directive on Trade Secrets
18/01/2019

Business secrets have long been poorly protected and difficult to defend compared to intellectual property rights (includi...

Read more

Implementation into Luxembourg law of EU Directive 2016/943 on trade secrets
07/09/2018

Although the implementation should have been enacted by 9 June 2018, Luxembourg has finally published, on 13 August, the f...

Read more

EU Trade Marks Should Be Distinctive Throughout the EU, Not Just a Significant Part Thereof
01/08/2018

In its recent Nestlé v Mondelez decision (C-84/17P, C-85/17P and C-95/17P), the Court of Justice of the European Un...

Read more

Consequences of intellectual property rights infringement in Luxembourg
10/07/2018

Over the last five years, the European Intellectual Property Office (EUIPO), through the European Observatory on Infringem...

Read more

Lastest articles by Mr. Vincent Wellens

European Court of Justice Confirms the Validity of the CETA Dispute Resolution Mechanism
07/05/2019

On 30 April 2019, the ECJ confirmed that the investment court system (ICS) created by the free trade agreement between the...

Read more

GDPR: CNPD Releases Black List of Processing Operations Subject to a Data Protection Impact Asse...
25/03/2019

Further to Article 35(4) and (6) GDPR, the competent supervisory authority, i.e. the CNPD in Luxembourg, must establish a ...

Read more

The Luxembourg Register of Ultimate Beneficial Owners - Practical Guidelines
28/02/2019

On 15 February 2019, a Grand Ducal Regulation on the registration requirements, administrative fees and access to informat...

Read more

Happy World Privacy Day 2019!
04/02/2019

The CNPD (Commission Nationale pour la Protection des données, or “CNPD”) has, until now, adopted a coo...

Read more

LexGO Network