Interested in the limits of parallel importation? Then pour yourself a stiff G&T and read on. The Barcelona Commercial Court (nº 8) in Spain has essentially asked the CJEU to rule on what happens when the owner of a trademark right has caused uncertainty as to the function of origin.
|The famous SCHWEPPES trade mark: it looks |
the same worldwide, but ownership varies
from one EEA country to another
- by a Schweppes International subsidiary such as Schweppes SL in Spain
- by Coca-Cola as the trademark owner, as in the UK, with no involvement of Schweppes International or any associated company, or
- by Coca-Cola as the licensee of Schweppes International, as in the Netherlands
- Is it incompatible with Article 36 of the Treaty on the Functioning of the European Union and Article 7.1 of Directive 2008/95/EC and Article 15.1 of the Directive (EU) 2015/2436 for the holder of a trademark in one or more Member States to prevent parallel importation or marketing of products, bearing a virtually identical trademark owned by a third party, from another Member State, when the holder has promoted a global brand image associated to the Member State from which the products intended to be prohibited came?
- Is it incompatible with Article 36 of the Treaty on the Functioning of the European Union and Article 7.1 of Directive 2008/95/EC and Article 15.1 of the Directive (EU) 2015/2436 for the holder of a well-known trademark to use it in a manner that generates confusion in the average consumer regarding the corporate origin of the product?
The IPKat thinks that Schweppes and Coca-Cola have done a pretty good job in marketing SCHWEPPES as a single global brand ... so much so that until hearing of this case he had no idea that the tonic water sold in Spain was from a different corporate stable than that sold in the UK. Looking at the respective websites would not have cured the IPKat of this misconception, referring as they both do to the same genesis story from 1783. So should a brand owner who sells off the brand rights in some countries be treated differently according to whether the brand continues to be marketed seamlessly to consumers as a single global brand? Is the function of origin of a trade mark fulfilled in these circumstances, and if not, what are the consequences for enforcing the trade mark rights?