A CLASSY CASE FROM THE ECJ

SmithKlineBeecham, the Beecham Group and GlaxoSmithKline are the proprietors of the AQUAFRESH trade mark in the Benelux, and the AQUAFRESH CTM. Class International obtained toothpaste bearing the AQUAFRESH trade mark from a South African undertaking and brought it into the EU at Rotterdam, the Netherlands. The goods were impounded at customs on suspicion of being counterfeit, but an inspection revealed that the goods were genuine. Class International applied for the goods to be released, arguing that they were merely in transit through the EU, and were not trade mark infringing imports. The Netherlands Regional Court of Appeal, The Hague referred various questions regarding the status of goods in transit through the EU and imports to the ECJ, which responded:

1. Article 5(1) and (3)(c) of Council Directive 89/104 and Article 9(1) and (2)(c) of Council Regulation 40/94 must be interpreted as meaning that a trade mark proprietor cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the Community previously by that proprietor or with his consent. The trade mark proprietor cannot make the placing of the goods at issue under the external transit procedure or the customs warehousing procedure conditional on the existence, at the time of the introduction of those goods into the Community, of a final destination already specified in a third country, possibly pursuant to a sale agreement.

2. ‘Offering’ and ‘putting on the market’ the goods, within the meaning of Article 5(3)(b) of Directive 89/104 and Article 9(2)(b) of Regulation 40/94, may include, respectively, the offering and sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done and/or the sale is effected while the goods are placed under the external transit procedure or the customs warehousing procedure. The trade mark proprietor may oppose the offering or the sale of such goods when it necessarily entails the putting of those goods on the market in the Community.

3. In a situation such as the one at issue in the main proceedings, it is for the trade mark proprietor to prove the facts which would give grounds for exercising the right of prohibition provided for in Article 5(3)(b) and (c) of Directive 89/104 and Article 9(2)(b) and (c) of Regulation 40/94, by proving either release for free circulation of the non-Community goods bearing his mark or an offering or sale of the goods which necessarily entails their being put on the market in the Community.

The IPKat welcomes this decision. In finding that mere entry that will not lead to the goods being placed on the market in the EU does not infringe, the ECJ is staying true to its previous holdings that the specific subject matter of IP rights, including trade marks, is the first sale of goods protected by that IP right on the market. Since mere transit will not lead to a sale on the EU market, there will be no interference with this specific subject matter.