[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　Mitsubishi has several trademarks registered in the European Union "MITSUBISHI" , Designated for use on goods such as forklifts. defendant Duma and GSI From the European Economic Area (European Economic Area) And a forklift made by Mitsubishi, And in accordance with customs warehousing procedures (customs warehousing procedure, Eu law lays down the procedure, To allow the temporary storage of goods outside the Community sphere in designated customs warehouses in the territory of the EU, There is no import duty, The duty is only payable when the goods actually enter the EU free trade area——Translator's note) Imported and stored in customs warehouses within the European Economic Area. In the customs warehouse, The defendant removed the original goods MITSUBISHI Trademark with its own trademark attached, It is then imported for sale in the European Economic Area market. Mitsubishi corporation sued Duma and GSI These actions violate its EU trademark rights.

　　The court heard that, European Court of Justice (Court of Justice of European Union) Precedents on parallel imports and trademark law, In principle, the defendant violated the plaintiff's trademark rights. but, Whereas the European Court of Justice has not yet ruled definitively on a dispute in exactly the same circumstances as this one, The hearing court decided to suspend the proceedings, And asked the European Court of Justice to make a preliminary ruling on the dispute.

　　 [conclusion]

　　First of all, Reply of European Court of Justice, "Regulation of the Council of Europe on Community trademarks (The first 207/2009 No) " The first 13. 1 prescribed "The trademark owner has no right to prohibit the resale of goods placed on the market by him in the European Economic Area" , Only where the goods are first placed on the EEA market by the right holder, In other words, The trademark owner shall have the right to control the first entry of goods bearing his trademark into the EEA market.

　　secondly, The European Court of Justice stressed again, The basic functions of a trademark include, Indicate the origin of goods using the trademark, Help trademark owner to obtain and maintain reputation in the market, As well as for publicity campaigns and business strategies.

　　Based on the above considerations, European court of justice ruling, Consider that the defendant in this case removed Plaintiff's trademark and affixed its own mark for the purpose of importing the goods in question into the European Economic Area for sale, Therefore, its behavior constitutes trademark infringement, specifically:

　　- First of all, The defendant's conduct infringes the trademark owner's right of control over the first entry into the market of the European Economic Area of goods bearing the trademark.

　　- secondly, The defendant's conduct interferes with the function of indicating the source of goods and investment promotion of the disputed trademark.

　　- again, As a result of the defendant's behavior infringes the trademark owner's control over the goods entering the European Economic Area for the first time, Obstructing the basic function of the trademark, Thus, it runs counter to the purpose of ensuring fair competition.

　　Therefore, European court of justice ruling, The trademark owner has the right to prohibit the defendant from acting. In addition, The court also held that, Even if the act of removing the original trademark and attaching the new mark is done while the disputed goods are stored in the designated warehouse in accordance with customs warehousing procedures, Nor does it affect the above conclusion, For the purpose of the conduct at issue is to import and sell the goods at issue into the European Economic Area.

　　 [comment]

　　This ruling is basically consistent with the conclusions of parallel import and trademark law precedents (Also refer to, 1998 years 7 month 16 day Silhouette Case decision (Case number: C-355/96) , 2001 years 11 month 20 day Davidoff Case decision (Case number: C-414/99, C-415/99 and C-416/99) , 2005 years 10 month 18 day Class International Case decision (Case number: C-405/03) and 2011 years 7 month 12 day L' Oréal Case decision (C-324/09) ) . Compare to the previous case, What is special about the European Court's decision in this case is that, Make it clear that the trademark owner has the right to prohibit parallel importation of goods bearing his trademark into the market of the European Economic Area for the first time without permission, Even if the actor removes the original trademark and replaces it with his own trademark while the goods in question are stored in accordance with customs warehousing procedures.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights