Breaking news: storage of goods by individuals can constitute a trademark use in the EU

The European Court has ruled in the case C‑772/18 which concerns the following background:

 On 4 April 2011 B, a natural person resident in Finland, received from China a consignment of 150 ball bearings weighing in total 710 kg, used as spare parts in transmission mechanisms, generators and engines and in the construction of bridges and tramways. On those bearings there was affixed a sign corresponding to the international word mark INA, of which A is the proprietor, covering, inter alia, goods classed as ‘bearings’.

Once customs clearance was completed in B’s name, on 12 April 2011 B withdrew the consignment from the customs warehouse at the airport of Helsinki-Vantaa (Finland), where it was stored, and took it to his home.

A few weeks later, the bearings were delivered to a third party in order to be exported to Russia.

B received as remuneration for those services a carton of cigarettes and a bottle of brandy.

In criminal proceedings for trade mark infringement brought against B before the Court of first instance of Helsinki, Finland, to which proceedings A was joined with respect to his civil interest, that court acquitted B on the ground that it could not be proved that he had deliberately committed an offence. That court however ordered B not to continue or repeat such conduct and ordered him to pay compensation and damages to A for the harm suffered by the latter.

B challenged those orders before the Court of Appeal of Helsinki, Finland.

That court, referring to the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), held that (i) B’s activity was, to a certain extent, equivalent to an activity of storage and onward transport of goods, and it had not been B’s objective to obtain any economic benefit from that activity, and (ii) the remuneration received on that occasion was not based on the economic exploitation of the goods in the course of a business but constituted only consideration for the storage of goods on behalf of a third party.

In the light of the foregoing, the Court of Appeal of Helsinki held that B had not used in the course of trade a sign similar to the registered trade mark at issue in the main proceedings and, consequently, held that the claim for compensation and damages made by A was unfounded.

A brought an appeal against that judgment before the Supreme Court, Finland.

The Supreme Court submits that it is not clearly apparent from the Court’s case-law whether the extent of the economic benefit obtained by a private person by reason of an alleged infringement of a trade mark is a relevant factor in order to determine whether or not there is use of a trade mark in the course of trade.

Further, while it is plain that Article 5 of Directive 2008/95 applies where a person uses a trade mark in the course of his or her own economic activity, there may be some doubt on that point where that person uses it for the benefit of a third party.

The Supreme Court submits that, in the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), it was held that the proprietor of a tax and customs warehouse who does no more than store on behalf of a third party goods bearing a sign identical or similar to a trade mark does not use that sign. The referring court is uncertain whether such case-law can be transposed by analogy to a case, such as that in the main proceedings, where an individual, in exchange for a bottle of cognac and a carton of cigarettes, has imported goods on behalf of a third party and has retained and stored them, prior to their being uplifted for onward shipment to a non-Member State.

The referring court is uncertain, last, whether the fact that an individual makes known his or her address to a dealer in goods, and takes delivery of them, although he or she did not request that those goods be sent to him or her and he or she took no other active role, can be considered to constitute the importing of goods, within the meaning of Article 5(3)(c) of Directive 2008/95.

In that regard, the referring court notes that, in the judgment of 18 October 2005, Class International (C‑405/03, EU:C:2005:616), the Court held that a prerequisite of goods being put on the market is that those goods have been released for free circulation within the meaning of Article 29 TFEU, which means that the customs duties and charges having equivalent effect that are due have been collected in that Member State. The referring court submits that there is uncertainty as to whether importing can be considered to occur where the person concerned does no more than take delivery of goods sent to his or her address, although he or she did not request that those goods be sent and there is no other active participation by that person in the shipment of those goods into the country.

In the light of all the foregoing, the Supreme Court decided to stay the proceedings and to refer to the Court the following questions for a preliminary ruling:

‘(1)  Is the amount of the benefit received from an alleged infringement of a trade mark by a private individual relevant when assessing whether his conduct is the use of a trade mark in the course of trade within the meaning of Article 5(1) of [Directive 2008/95]or purely private use? If a private individual uses a trade mark, does use in the course of trade require the satisfaction of criteria other than the requirement of economic benefit obtained from the transaction in question concerning the trade mark?

(2)  If the economic benefit must have a certain degree of significance, and a person, on the basis of the triviality of the economic benefit received by him and the non-fulfilment of other possible criteria of use in the course of trade, may not be regarded as having used a trade mark in the course of his own trade, is the condition of use in the course of trade within the meaning of Article 5(1) of [Directive 2008/95] satisfied if a private individual uses a trade mark on behalf of another person as part of that other person’s trade, where he is not, however, an employee in the service of that other person?

(3)  Does a person keeping goods use a trade mark in relation to goods within the meaning of Article 5(1) and (3)(b) of [Directive 2008/95] if the goods on which the trade mark is affixed, sent to a Member State and released into free circulation there, are taken delivery of and retained on behalf of a company that deals in goods by a person who does not carry on a business of importing and storing goods and who does not have a licence to operate a customs warehouse or tax warehouse?

(4)   May a person be regarded as importing goods on which a trade mark is affixed within the meaning of Article 5(3)(c) of [Directive 2008/95] if the goods were not imported at the person’s request, but the person provided his address to a dealer and the goods released into free circulation in the Member State were taken delivery of by that person on behalf of the dealer, and that person retained them for some weeks and delivered them for shipment to a third country outside the European Union for the purpose of resale there?’

The Court’s decision:

Article 5(1) 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, read in conjunction with Article 5(3)(b) and (c) of that directive, must be interpreted as meaning that a person who does not engage in trade as an occupation, who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his or her address from a third country and where a trade mark, without the consent of the proprietor of that trade mark, is affixed to those goods, must be regarded as using that trade mark in the course of trade, within the meaning of Article 5(1) of that directive.


Graffiti, Banksy and some requirements for trademark protection

graffiti-1380108_960_720.jpgThe topic for the protection of graffiti works has made the headlines in recent years. One of the possible ways this to be achieved is through the registration of trademarks.

In light of this, a recent trademark case has attracted our attention. The well-known graffiti artist Banksy has faced a cancelation procedure against his following registered European trademark in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, 42:


The procedure was initiated by the French greeting card maker Full Colour Black on the ground of lack of a genuine trademark use.

As a reaction, Banksy announced the launching of an online store where he will sell products with its mark.

However, this is highly unlikely to succeed because all pieces of evidence have to be dated before the date of the cancelation request, otherwise, they can’t suggest any genuine market use other than just an attempt for maintaining the trademark registration.

According to the law, every trademark can be canceled if it is not used for 5 consecutive years.

This situation is quite difficult for most of the artists because although they can register a trademark, its use, in the long run, is always a challenge especially when it comes to wider scope of goods and services.

Another possible and available tool, however, can be copyright, where there are no requirements for registration.

Source: WIPR.