PARALLEL IMPORTER NOT PLAYING FAIR WITH PLAYSTATION IMPORTS

This slipped on to the BAILII website when the IPKat was hard at work on other exciting developments. It's the decision of Mr Justice Lawrence Collins in the Chancery Division dispute of Kabushiki Kaisha Sony Computer Entertainment and another v Nuplayer Ltd [2005] EWHC 1522 (Ch), in which judgment was delivered last Thursday.

In December 2004 Sony launched in Japan a new hand-held, multi-media PSP console which allowed the user to play games, watch films, store photographs and listen to music. Sony planned to launch the console in the UK in 2005 but, in March 2005, it found that parallel imported PSP consoles were being offered for sale in the UK via Nuplayer's website. Sony complained that, by offering the consoles for sale in the UK, Nuplayer infringed a number of their European and UK trade marks (including the word mark PlayStation and the PS logo). Nuplayer said it had not relied upon the registered marks in the course of trade in the relevant goods and that it was prepared to obliterate all instances of the marks on the goods or packaging of the PSP consoles which it intended to continue to import, so that they would no longer be used as a guarantee of the origin of those consoles. Sony sued for trade mark infringement, arguing that Nuplayer was "using" its marks under section 10(4)(b) and (c) of the Trade Marks Act 1994 ((b) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign; (c) importing or exporting goods under the sign"), seeking summary judgment. Nuplayer denied infringing: it said that (i) it did not "use" Sony's marks in the context of sales to consumers prior to the entire transaction being concluded and that (ii) there would in any event be no future infringement as a result of the obliteration of the marks, both from its website and from the products imported. In these proceedings Lawrence Collins J had to consider whether a trade mark owner could prevent internet sales in the UK of parallel imports which were first marketed outside the European Economic Area.

The judge held for Sony. His conclusions were as follows:

* The fact that Nuplayer, in selling the consoles on the internet, did not display them for inspection but merely described them as ‘PSP consoles’ did not mean that it did not use Sony's marks, since section 10(4) of the Act specifically included "stocking" products under the mark as an infringement;

* It was clear that Nuplayer was using the marks in relation to the goods. Its offer to obliterate the marks did not make any difference: although the court had power under the Act to order an infringer to erase, remove or obliterate a sign from any infringing goods, that was merely one of the possible remedies and could not found an argument that products which would otherwise have been infringing ceased to be so when the marks were erased or obliterated.

* Since the defendant had no arguable defence, summary judgment would be ordered.

The IPKat notes that, even if this were NOT an appropriate case for summary judgment, the learned judge would have ordered interim relief pending the trial. He also rejected the argument that Nuplayer's use of Sony's marks could ever be regarded as a descriptive use falling within the scope of a permitted use in terms of the ECJ's leading ruling in Case C-200 Hölterhoff [2002] ECR I-4187.

Nuplayer website here
Oldplayer website here