THURSDAY, 11 JANUARY 2018
CJEU: Red Paralela and another v Orangina Schweppes
The CJEU recently had to decide on the scope of a trade mark owner's right to oppose the importation of goods affixed with its trade mark, where those goods had been placed on the market by its assignee in another EEA member state. In the case decided by the CJEU, the trade mark owner had, inter alia, sold its trade mark in Spain but kept its trade mark rights for the UK; Red Paralela and another v Orangina Schweppes Holding BV and others (C-291/16) of 20 December 2017. The CJEU found that the trade mark owner may not oppose the import of products bearing the same trade mark if it has actively given the impression that it is a single global trade mark.
By way of legal background: the exhaustion rule of Article 7(1) Trade Marks Directive (2008/95/EC) provides that a trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the EU under that trade mark by the proprietor or with his consent.
The CJEU held Schweppes could not oppose the importation of goods bearing the bearing its trade mark since it had promoted the trade mark as single global trade mark and had had joint control over the mark together with its assignee. More specifically, the CJEU decided that
(1) the proprietor (acting alone or with the assignee) has actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark;
(2) there are economic links between the proprietor and the assignee involving co-ordination of their commercial policies or an agreement to exercise joint control over the use of the mark, so that they can determine (either directly or indirectly) the goods to which the trade mark is affixed and control the quality of those goods. The latter slightly differs from the AG opinion which had used the term "unitary control".
The decision highlights the potential risks for trade mark assignors, who split their mark by assigning it in some territories but retain the identical mark in other territories, of being unable to prevent parallel imports of goods placed on the market by that assignee if they continue to closely co-operate with their assignee.
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