Sometimes IP litigants just effortless breeze into court and, hey presto, whatever problem they have instantly vanishes. Japanese motor vehicle manufacturer is not such a litigant. Indeed, Honda Motor Co Ltd and another v David Silver Spares Ltd  EWHC 1973 (Ch), a 28 July 2010 ruling by George Leggatt QC, sitting as a deputy judge of the Chancery Division (England and Wales), is the latest chapter in the long and often frustrating journey taken by Honda into the highways and byways of the English legal system in its attempt to stop the importation and sale in the United Kingdom of genuine Honda bikes that were first sold in all sorts of distant lands (see earlier IPKat posts here, here and here).
In this action Honda was flexing the muscles of its Community and UK registered trade marks for the word HONDA in respect of motorcycles and parts for them. These muscles were being flexed in the direction of Silver, the biggest British supplier of Honda spare parts. Honda sued for trade mark infringing, saying that Silver was trading in spares that had not been first marketed in the European Economic Area (EEA) by Honda or with its consent. In these proceedings Silver demanded that this claim be struck out or at least that summary judgement should be granted in its favour on the ground that the claim was entirely speculative and lacking in particularity.
The Deputy Judge dismissed Silver's application.
- The effect of harmonised domestic European trade mark law was that, even where a trade mark proprietor puts goods on the market himself outside the EEA, he can still assert his trade mark right to prevent importation of those goods into the EEA without his consent.
- Such consent has to relate to each individual item of the trade mark-protected product in respect of which a defendant pleads exhaustion of rights. This consent must be expressed positively [it can also be implied if the evidence of the implication is uniquivocal, the IPKat reminds readers], it being for the trader alleging consent to prove it -- not for the trade mark owner to demonstrate its absence. Only if the defendant can establish that a real risk of partitioning of national markets exists will that burden of proof be reversed.
- In this case, Silver did not even begin to show that Honda's claim lacked any reasonable basis or had no real prospect of succeeding. There was therefore no need for Honda to show that the motorcycle parts which Silver was selling were first placed on the market by Honda or with its blessing outside the EEA. Honda only needed to assert on reasonable grounds that Silver had used its trade marks within the EEA for the goods for which they were registered and that it (Honda) had not consented to such use.