The matter at hand
At the request of trader Van Caem, logistics service provider TOP Logistics released non-exhausted Bacardi products from third states for free circulation but placed these goods under the duty suspension arrangement.
It is common practice amongst parallel traders to import goods into the EU and to subsequently export to third states, inter alia to be able benefit from trade agreements between the EU and third states. Against this backgrounds, the Hague Court of Appeals had doubts whether the placing of non-exhausted under duty suspension arrangements qualifies as ‘use’ ‘in the course of trade’ within the meaning of Article 5(1) of the Trade Mark Directive and whether this has an adverse effect on one of the functions of the trade mark within the meaning of the case-law of the ECJ.
The judgment of the ECJ
The ECJ first establishes that, as the goods have been released for free circulation, “those goods have been imported within the meaning of Article 5(3)(c) of the Trade Mark Directive” (paragraph 35). It then considers that this is use in “own commercial communications” in the sense of Google France (C-236/08 – C238/08), as, “if it were otherwise, the acts of import and of stocking for the purpose of placement on the market, mentioned in Article 5(3) of the Trade Mark Directive and normally carried out without direct contact with potential consumers, could not be qualified as ‘using’ within the meaning of that article and could not be prohibited, even though the EU legislature has expressly identified them as being prohibited.” (paragraph 42).
The ECJ then considers that “the importation of products without the consent of the proprietor of the trade mark concerned and the holding of those products in a tax warehouse before their release for consumption in the European Union has the effect of depriving the proprietor of that mark of the possibility of controlling the conditions of the first placing on the market within the EEA of products bearing its trade mark. Such acts also adversely affect the function of the trade mark of identifying the undertaking from which the products originate and under whose control the initial placing on the market is organised.” (paragraph 48).