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 Sàrl ( Mr. Vincent Wellens )

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


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

Lastest articles Intellectual property law

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

La réforme du droit d'auteur dans l'UE : une nouvelle protection contre l'hégémonie des GAFA ?
02/07/2018

En matière de réforme visant à faciliter l’émergence d’un marché unique du ...

Read more

Red Sole Diary: how the story ends before the CJEU
21/06/2018

The Court of Justice of the European Union (“CJEU”) handed down an eagerly awaited decision in a dispute about...

Read more

Lastest articles by Mr. Vincent Wellens

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

CJEU in Truvada case: no SPC for A+B (unless "the claims relate necessarily and specifically to t...
26/07/2018

Today (25.07), the Court of Justice of the European Union ("CJEU") has rendered a long awaited decision in a dis...

Read more

GDPR Series: Part 18 - Automated Individual Decision-Making, Including Profiling
23/07/2018

This series provides more detailed insight into the General Data Protection Regulation ("GDPR"), which was publi...

Read more

Red Sole Diary: how the story ends before the CJEU
21/06/2018

The Court of Justice of the European Union (“CJEU”) handed down an eagerly awaited decision in a dispute about...

Read more

LexGO Network