A control of a trade mark owner on imported goods without his permission in the EU

The European Court issued a judgment in Case C-379/14 TOP Logistics BV, Van Caem International BV v Bacardi & Company Ltd, Bacardi International Ltd; Bacardi & Company Ltd, Bacardi International Ltd v TOP Logistics BV, Van Caem International BV.
The case concerns the following:
TOP Logistics, formerly Mevi Internationaal Expeditiebedrijf BV (‘Mevi’), is an undertaking active in the storage and transhipment of goods. It has a licence to operate a customs warehouse and an excise warehouse.
Van Caem is an undertaking active in the international trade in trade-marked goods.
Bacardi produces and markets alcoholic drinks. It is the proprietor of various trade marks for those products.
During 2006, at the request of Van Caem, several consignments produced by Bacardi, transported to the Netherlands from a third State, were stored with Mevi in the port of Rotterdam (Netherlands).
Those goods were placed under the customs suspension arrangement for external transit or customs warehousing, such goods being known as (‘T1 goods’).
Subsequently, some of those goods were released for free circulation and placed under the duty suspension arrangement. Accordingly, those goods left the customs suspension arrangement regulated by Articles 91, 92 and 98 of the Customs Code and were placed in a tax warehouse.
Not having consented to the introduction of the goods at issue into the EEA and having, furthermore, learnt that the product codes had been removed from the bottles in the relevant consignments, Bacardi had them seized and sought various orders from the Rechtbank Rotterdam (District Court, Rotterdam). For that purpose it relied on an infringement of its Benelux trade marks.
By judgment of 19 November 2008, the Rechtbank Rotterdam held that the introduction into the EEA of the goods at issue infringed Bacardi’s Benelux trade marks and it took some of the requested measures.
TOP Logistics brought an appeal before the Gerechtshof Den Haag (Court of Appeal, The Hague). Van Caem was granted leave to intervene in those appeal proceedings.
By interlocutory judgment of 30 October 2012, that jurisdiction ruled that, as long as the goods at issue had the status of T1 goods, there was no infringement of Bacardi’s Benelux trademarks.
As to whether those marks had been infringed once the goods at issue had been placed under the duty suspension arrangement, that Court stated, in its interlocutory judgment, its intention of submitting a request for a preliminary ruling.
In the order for reference, the Gerechtshof Den Haag states that, unlike in the case of T1 goods, any import duties which might be payable were paid for goods in a tax warehouse. Those goods have, consequently, been imported within the meaning of Directive 92/12 and released into free circulation. They have become Community goods.
Those findings must not, however, according to the Gerechtshof Den Haag, necessarily lead to the conclusion that the goods at issue have been imported within the meaning of Article 5(3)(c) of Directive 89/104.
Moreover, the Gerechtshof Den Haag has doubts whether, in relation to goods placed under the duty suspension arrangement, there can be ‘use’ ‘in the course of trade’ within the meaning of Article 5(1) of Directive 89/104 and a likelihood of an adverse effect on one of the functions of the trade mark within the meaning of the case-law of the Court.
In those circumstances, the Gerechtshof te Amsterdam decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘These questions concern goods originating outside the EEA which, after having been brought into the territory of the EEA (neither by the trade mark proprietor nor with its consent), are placed in a Member State of the European Union under the external transit procedure or under the customs warehousing procedure.
(1) Where such goods are subsequently placed under a duty suspension arrangement, as in the present case, must those goods then be regarded as having been imported within the meaning of Article 5(3)(c) of Directive 89/104 with the result that there is “use (of the sign) in the course of trade” that can be prohibited by the trade mark proprietor pursuant to Article 5(1) of that directive?
(2)  If Question 1 is answered in the affirmative, must it then be accepted that in circumstances such as those in the case at issue, the mere presence in a Member State of such goods (which have been placed under a duty suspension arrangement in that Member State) does not prejudice, or cannot prejudice, the functions of the trade mark, with the result that the trade mark proprietor which invokes national trade mark rights in that Member State cannot oppose that presence?’
The Court’s decision:
Article 5 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark registered in one or more Member States may oppose a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor.
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