The matter at hand
B, a natural person resident in Finland, received from China a consignment of 150 ball bearings weighing 710 kg in total, which are used as spare parts in transmission mechanisms, generators and engines and in the construction of bridges and tramways. On those bearings there was affixed a sign corresponding to the international word mark INA, of which A is the proprietor, covering, inter alia, goods classed as ‘bearings’.
Once customs clearance was completed in B’s name, B collected the consignment from the airport of entrance into the EU, where it was stored, and took it to his home. A few weeks later, the bearings were delivered to a third party in order to be exported to Russia. As remuneration or those services, B received a carton of cigarettes and a bottle of brandy.
In criminal proceedings lodged against B it was held that B had not used in the course of trade a sign similar to the registered trade mark at issue. A, which had joined the criminal proceedings, brought an appeal against that judgment before the referring court, the Korkein oikeus (Supreme Court, Finland).
This court raised a number of questions, which the ECJ examines together, to ascertain whether Article 5(1) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, read in conjunction with Article 5(3)(b) and (c) of that directive, must be interpreted as meaning that a person who does not engage in trade as an occupation, but who takes delivery of, releases for free circulation in a Member State and retains trade marked goods, that are manifestly not intended for private use, must be regarded as using that trade mark in the course of trade, within the meaning of Article 5(1) of that directive.
The judgment of the ECJ
The ECJ starts off by reiterating its decision in case C-324/09 (L’Oréal and Others) that, if a transaction carried out, by reason of their volume, their frequency or other characteristics, goes beyond the scope of a private activity, whoever carries out those transactions will be acting in the course of trade (paragraph 23). The ECJ continues that the goods in this case are generally used in heavy industry. Accordingly, since those goods, having regard to their nature and their volume, are manifestly not intended for private use, the relevant transactions must be considered to fall within the scope of a trading business, though that is a matter to be determined by the referring court.
Further, a person who makes known his or her address as the place to which the goods concerned are to be shipped, who completes or has completed by an agent the customs clearance of those goods and who releases them for free circulation is importing those goods within the meaning of Article 5(3)(c) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks. This is regardless of ownership, or whether that person acts on behalf of the economic interests of a third party (paragraph 27). The fact that a person has imported and released for free circulation such goods justifies in itself a finding that that person has acted in the course of trade, there being no need to examine subsequent dealings with those goods (paragraph 28).
Last, the significance of the remuneration that the importer has received by way of consideration for his so acting is also of no relevance (paragraph 29).