Thursday, 10 December 2015
Given that they were not compensated for the return of unused toner cartridges to Xerox NV, it is no wonder some end users sold their surplus stock to Impro Europe, which claimed that any trade mark rights Xerox may have had were exhausted.
The Brussels Court of Appeal first reminded the parties that the burden of proof that the goods had been placed on the EU market with the trade mark owner's consent lay with the alleged infringer, i.e., Impro Europe. Only when the alleged infringed could show that there existed a real risk that national markets are partitioned if it must prove that the goods were placed on the market in the EEA by the trade mark owner or with its consent does the burden shift back to the trade mark owner (with reference to C-244/00 - van Doren + Q). The mere existence of an exclusive distribution system to market the trade marked goods did not automatically result in a shift of the burden of proof. Impro Europe had failed to prove that there was a real risk that national markets were partitioned.
The Court then held, without much ado, that goods supplied under a maintenance agreement and remaining in the sole property of Xerox NV until their use were not "put on the market" with the consent of the trade mark owner in the sense of art. 13(1) Community Trade Mark Directive, and if they are traded by third parties, this happens without Xerox's consent. It issued a pan-European injunction against Impro Europe and ordered it to surrender its profits.
Another interesting tidbit is that the Court explicitly notes in its decision of 20 October 2015 that "for the sale of consumables without maintenance services, Xerox applies the same harmonized identical price throughout Europe" (emphasis in original). It does not say anything explicit about the prices for consumables sold (oops, "put at disposal but retaining title") within the framework of a maintenance agreement. May we conclude, e contrario, that these goods are sold at different prices in different markets? If so, does the whole set-up not have a whiff of market partitioning, or is this Kat's nose too sensitive?
Posted by Mark Schweizer at 13:45:00