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PS XI: Keep your hands off my brands

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2019 AIPPI World Congress – London

September 15 - 18, 2019

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Panelists

Dennis Prahl, Ladas & Parry LLP (US)

Paolina Testa, Studio FTCC (IT)

Dan Chen, Fairsky Law Office (CN)

Santiago Ortúzar, Alessandri (CL)

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Mitsubishi case (C-129/17) –Background

• Duma/GSI acquired Mitsubishi forklift trucks outside the European Economic Area and placed them in a customs warehouse

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Mitsubishi case (C-129/17) –Background

• Duma/GSI removed Mitsubishi trademarks from the forklift trucks, modified them to meet EU standards, placed their own trademarks on them and sold them into the EEA

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Mitsubishi case (C-129/17) –Questions

The Brussels court of appeal asked the ECJ:

1) a. Do Article 5 of Directive 2008/95 and Article 9 of Council Regulation No 207/2009 cover the right of the trade mark proprietor to oppose the removal, by a third party, without the consent of the trade mark proprietor, of all signs identical to the trademarks which had been applied to the goods (debranding), in the case where the goods concerned have never previously been traded within the EEA, such as goods placed in a customs warehouse, and where the removal by the third party occurs with a view to importing or placing those goods on the market within the EEA?

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Mitsubishi case (C-129/17) –Questions

1) b. Does it make any difference to the answer to question (a) above whether the importation of those goods or their placing on the market within the EEA occurs under its own distinctive sign applied by the third party (rebranding)?

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Mitsubishi case (C-129/17) –Questions

2) Does it make any difference to the answer to the first question whether the goods thus imported or placed on the market are, on the basis of their outward appearance or model, still identified by the relevant average consumer as originating from the trade-mark proprietor?’

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Mitsubishi case (C-129/17) –Holding

A trademark owner may object to a third party, without its consent, removing signs identical to the mark and affixing other signs on the products in the customs warehouse in order to import and sell them into the EEA where they have not yet been marketed.

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Mitsubishi case (C-129/17) –Rationale

• Removing a trademark from products before placing them into the EEA market deprives the trademark owner of the essential right to control the initial marketing of the product in the EEA;

• Such activity adversely affects the indication of origin, investment and advertising functions of the mark;

• Such activity, with the aim of circumventing the mark owner’s right to prohibit the importation of those goods bearing its mark, is contrary to the objective of ensuring undistorted competition;

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Mitsubishi case (C-129/17) –Rationale

• Removing signs and replacing them with others involves active conduct in the exercise of a commercial activity for economic advantage and constitutes “use in the course of trade” under EU trademark law.

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Discussion point #1

• The ECJ decision occurs under the EU doctrine of regional/national exhaustion of trademark rights rather than international exhaustion. Which doctrine applies in your country/region? Is debranding/rebranding treated differently or even treated at all? Are any of the four ECJ rationales applicable in your country/region?

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Discussion point #2

• The Mitsubishi decision addressed forklifts. Are there any special rules or laws in your country/region regarding other types of goods and parallel imports/debranding/rebranding that brand owners need to be aware of?

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Discussion point #3

• Aside from trademark infringement/or if trademark infringement is not applicable, are there any other laws in your country/region that might apply to parallel imports that would favor a brand owner?

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Discussion point #4

• Aside from debranding/rebranding considerations, what are some other practical solutions to advise clients to prevent problems with parallel imports in your country/region?

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Thanks for your attention!