Advocate General M Campos Sánchez-Bordona
The first applicant, established in Japan, was the proprietor of European Union and Benelux word and figurative marks relating, inter alia, to motor vehicles and forklift trucks. The second applicant, established in The Netherlands, was exclusively authorised to manufacture and place on the market in the European Economic Area (“EEA”) forklift trucks supplied under the first applicant’s marks. The respondents, companies established in Belgium, were engaged in the worldwide purchase and sale of new and used forklift trucks and the construction and repair of forklift trucks imported and exported on the world market. Since 2009 the respondents had acquired forklift trucks from a company within the applicants’ group of companies outside the EEA. The trucks were brought into EEA territory and placed into a customs warehousing procedure. The respondents then removed from the goods all the signs identical to the first applicant’s marks and made the necessary modifications to render the goods complaint with EU standards, replacing the identification plates and serial numbers with their own signs. The goods were then imported and subsequently marketed by the respondents both within and outside the EEA. The applicants brought proceedings by which they sought to restrain those activities. Those claims having been dismissed, the applicants appealed to the Court of Appeal, Brussels contending that the removal of the signs and affixing of new signs on forklift trucks purchased outside the EEA, the removal of identification plates and serial numbers, and the importation and marketing of those forklift trucks in the EEA, infringed the rights conferred by the first applicant’s marks. In particular, the removal of the signs identical to those marks, without consent, was an infringement of the right of the proprietor of the mark to control the first placing on the market in the EEA of the goods bearing that mark and harmed the mark’s functions of indicating origin and quality, as well as the functions of investment and advertising. In those circumstances, the Belgian court stayed the proceedings and referred to the Court of Justice of the European Union for a preliminary ruling questions concerning the interpretation of article 5 of Parliament and Council Directive 2008/95/EC and article 9 of Council Regulation (EC) No 2007/2009 and whether those provisions permitted the proprietor of an EU trade mark to prohibit acts such as those complained of in the main proceedings.
On the reference—
Held, that the removal of signs identical to an EU mark prevented the goods for which that mark was registered from bearing that mark the first time that they were placed on the market in the EEA and, hence, deprived the proprietor of that trade mark of the benefit of the essential right to control the initial marketing in the EEA of goods bearing that mark. Furthermore, the removal of the signs identical to the registered mark and the affixing of new signs on goods with a view to their first placing on the market in the EEA adversely affected the functions of the mark. The fact that the removal of the signs identical to the mark and the affixing of new signs took place when the goods were still placed under the customs warehousing procedure was immaterial where those operations had been carried out for the importing and placing on the market of those goods in the EEA. Moreover, the removal of the signs identical to the mark and the affixing of new signs on the goods precluded the trade mark proprietor from being able to retain customers by virtue of the quality of its goods and affected the functions of investment and advertising of the mark where, as in the present case, the product in question had yet to be marketed under the trade mark of the proprietor on that market by him or with his consent. Accordingly, article 5 of Parliament and Council Directive 2008/95/EC and article 9 of Council Regulation (EC) No 207/2009 had to be interpreted as meaning that the proprietor of a mark was entitled to oppose a third party, without its consent, removing all the signs identical to that mark and affixing other signs on products placed in the customs warehouse, as in the main proceedings, with a view to importing them or trading them in the EEA where they had never yet been marketed (judgment, paras 42–44, 46–50, 52, operative part).
P Maeyaert and J Muyldermans for the applicants.
K Janssens, J Keustermans and M R Gherghinaru for the respondents.
T Henze, M Hellmann and J Techert, agents, for the German Government.
J Samnadda and E Gippini Fournier and F Wilman, agents, for the European Commission.