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Sunday, 12 March 2006


Can we have our habanos back please?

Mastercigars Direct Ltd v Hunters & Frankau Ltd [2006] EWHC 410 (Ch) is a Chancery Division decision given by Judge Michael Fysh QC, sitting on Friday as a High Court judge (he is better known as the Patents County Court judge). The judgment is huge (you can read it here in full on BAILII), but the IPKat must confess he found it first on LexisNexis/Butterworths' All England Direct subscription service.

The proceedings concerned a trade mark dispute in respect of the import into the UK of many well-known brands of habanos (hand-rolled Cuban cigars). The dispute arose from the ongoing concern by CHSA, the Cuban proprietor of the trade marks in issue, as to the legitimacy of importing habanos which had been purchased from official sales outlets in Cuba and later imported into the UK by anyone other than Hunters & Frankau (CHSA’s sole UK distributor).

Mastercigars Direct, who imported and owned a particular consignment of habanos, sought the release of that consignment from HM Customs and Excise (HMCE), which seized the consignment under its statutory powers on the grounds that it contained counterfeit goods that infringed CHSA’s trade marks. Mastercigars, denying that the cigars were counterfeit or that they infringed CHSA’s trade marks, sought declaratory relief to that effect, relying on the history of earlier consignments to show a previous course of dealing and thus consent on the part of CHSA.
Judge Fysh QC allowed only part of Mastercigars' claim. Mastercigars had failed to prove that CHSA had consented to the importation of either the consignment in suit or any of the 'historic' consignments. However, the evidence supporting the contention that the cigars were counterfeit was "riddled with mysteries, lacunae and procedural unfairness" to Mastercigars Direct.

The IPKat has recently been considering the ECJ's decision in Case C-405/03 Class International, as well as this decision. The ECJ was criticised for making it too difficult for trade mark owners to control potentially infringing activities in respect to goods imported from outside the EEA; but here it appears that it's just as difficult for the owners of allegedly infringing goods to get them back into circulation again. Merpel says: you're not suggesting that the law is perfectly balanced when it's equally inconvenient for both sides, are you?

More on cigars here
How to spot a fake cigar here

ECJ wake-up call in mattress case

It may have taken a day or two to get on to the Curia website, but Case C-421/04 Matratzen Concord SA v Hukla Germany SA, last Thursday’s ruling of the European Court of Justice, is now available.

Hukla owned the Spanish trade mark MATRATZEN for beds, sofa beds and camp beds. Matratzen sought to cancel the mark before the Barcelona Court of First Instance, objecting that the word ‘matratzen’ meant ‘mattress’ in German. Accordingly the word of which the mark consisted was generic and could mislead consumers regarding the nature, quality, characteristics or geographical origin of products bearing the trade mark. After the court rejected the action, Matratzen appealed to the Provincial Court of Barcelona, which stayed the proceedings and referred the following question to the European Court of Justice for a preliminary ruling as to whether Articles 28 EC and 30 of the European Treaty must be interpreted as meaning that they preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought.

Side-stepping the question by answering it in terms of the trade mark harmonisation directive rather than the European Treaty itself, the Court ruled:

Article 3(1)(b) and (c) of Council Directive 89/104 does not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term.
The court explained that, as the registrability of trade mark was a field of law that had been exhaustively harmonised, it was Directive 89/104, as a harmonising measure—and not the EC Treaty—that had to be considered when deciding whether Community law precluded the registration of a national trade mark.

The IPKat agrees that this approach is the correct one, though he still wonders whether MATRATZEN should be considered as validly registered for mattresses in Spain, given the large number of Germans who have either retired to Spain or regularly holiday there: are they not also relevant consumers?

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