Debranding, rebranding and use of a trademark in the EU – the Mitsubishi case

truck-2920533_960_720The European court has ruled in C‑129/17, Mitsubishi Shoji Kaisha Ltd v Duma Forklifts NV. The case at hand concerns the following:

Mitsubishi, established in Japan, is the proprietor of the following marks (‘the Mitsubishi marks’):

–  The EU word mark MITSUBISHI, registered on 24 September 2001 under number 118042 for, inter alia, goods in Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, including motor vehicles, electric vehicles and forklift trucks;

–  The EU figurative mark, represented below, registered on 3 March 2000 under number 117713, designating in particular the products in Class 12 of that Agreement, including motor vehicles, electric vehicles and forklift trucks:

Image not found

–  The Benelux word mark MITSUBISHI registered on 1 June 1974 under the number 93812, designating inter alia the goods in Class 12, including land vehicles and means of transport and Class 16, including books and printed matter;

–  The Benelux figurative mark MITSUBISHI registered on 1 June 1974 under the number 92755, designating inter alia the goods in Class 12, including land vehicles and means of transport and Class 16, including books and printed matter, identical to the EU figurative mark.

MCFE, established in the Netherlands, is exclusively authorised to manufacture and place on the market in the EEA forklift trucks supplied under the Mitsubishi mark.

Duma, established in Belgium, has as its main activity the worldwide purchase and sale of new and second hand forklift trucks. It also offers for sale its own forklift trucks under the names ‘GSI’, ‘GS’ and ‘Duma’. It was previously an official subdealer of Mitsubishi forklift trucks in Belgium.

GSI, also established in Belgium, is affiliated with Duma, whose administration and head office it shares. It constructs and repairs the forklift trucks that it imports and exports wholesale, with their components, on the world market. It adapts them to the applicable European standards, gives them their own serial numbers and delivers them to Duma, providing EU declarations of conformity.

It is stated in the order for reference that, in the period from 1 January 2004 to 19 November 2009, Duma and GSI proceeded to make parallel imports in the EEA of forklift trucks bearing the Mitsubishi marks, without the consent of the proprietors of those marks.

Since 20 November 2009, Duma and GSI have acquired from a company within the Mitsubishi group, outside the EEA, forklift trucks that they bring into EEA territory where they place them under a customs warehousing procedure. They then remove from those goods all the signs identical to the Mitsubishi marks, make the necessary modifications to render those goods compliant with European Union standards, replacing the identification plates and serial numbers with their own signs. They import those goods and then market them both within and outside the EEA.

Mitsubishi and MCFE applied to the Rechtbank van koophandel te Brussel (Commercial Court, Brussels, Belgium) seeking, in particular, that the court order the cessation of those activities. Their applications were rejected by a judgment of 17 March 2010, and so they appealed to the Hof van beroep te Brussel (Court of Appeal, Brussels, Belgium), before which they sought the prohibition of both the parallel trade in forklift trucks bearing the Mitsubishi mark and the importation and marketing of forklift trucks on which signs identical to those marks have been removed and new signs affixed.

Before that court, Mitsubishi submitted 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 on them by the Mitsubishi marks. It submitted in particular that the removal of the signs identical to those marks, without its 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. It observed, in that regard, that despite that removal, the Mitsubishi forklift trucks remained recognisable to the consumer.

Duma and GSI submitted in particular that they must be regarded as the manufacturers of the forklift trucks that they purchased outside the EEA because they made modifications to those trucks in order to render them compliant with European Union regulation, and they were therefore entitled to affix their own signs.

As regards the parallel import into the EEA of forklift trucks bearing the Mitsubishi marks, the referring court held that that was a breach of the law on trademarks and upheld the applications made by Mitsubishi and MCFE. With regard to the importation and marketing in the EEA, with effect from 20 November 2009, of Mitsubishi forklift trucks originating in countries that are not members of the EEA on which the signs identical to the Mitsubishi marks were removed and new signs affixed, it observed that the Court had not yet ruled on the question of whether actions, such as those undertaken by Duma and GSI, constituted a use that the proprietor of the mark could prohibit, while observing that the Court’s case-law gave indications that led it to suppose that that question called for a positive response.

It was in those circumstances that the Hof van beroep te Brussel (Court of Appeal, Brussels) (Belgium) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(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 trademark 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?

(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)?

(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?’

The Court’s decision:

Article 5 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Article 9 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trademark must be interpreted as meaning that the proprietor of a mark is 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 have never yet been marketed.

Image: Tama66 on Pixabay.
Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s