Editor's note: This case consists of two parallel related actions, The party to the action is TOP Logistics BV, Van Caem International BV, The other side is Bacardi, The dispute involves pasting Bacardi Branded goods. Details of the case can be found below!

[background] This case consists of two parallel related actions, The party to the action is TOP Logistics BV, Van Caem International BV, The other side is Bacardi, The dispute involves pasting Bacardi Branded goods. 2006 years, Van Caem (Engaged in brand goods international trade) The disputed goods will be shipped to the Netherlands in several batches via a third country, And stored in TOP Logistics (Engaged in warehousing and transshipment of goods) A warehouse in the port of Rotterdam. The commodities involved were initially monitored in accordance with procedures for external transshipment or customs storage. subsequently, Some goods are subject to excise duty suspension procedures (duty suspension arrangement) , And put it on the market for free circulation. correspondingly, These goods are no longer subject to customs suspension procedures (customs suspension arrangement) supervision, It's transferred to the tax warehouse (tax warehouse) store. Bacardi Think that, Importing the goods in question into the European Economic Area without its permission (European Economic Area) And removing the code violates its trademark rights, He filed a trademark infringement suit with the Rotterdam court. 2008 years, The Court of Cassation in Rotterdam handed down its judgment of first instance, identification Bacardi Trademark rights are infringed. TOP Logistics BV Objection to the judgment, Appeal to the Court of Appeal in The Hague, And add Van Caem Participate in the appeal process. 2012 years, Appellate decision, Goods under the supervision of external transhipment or customs storage procedures are not infringed Bacardi Trademark right. The appeal court appealed to the European Court of Justice (Court of Justice) A preliminary determination was made on another issue of the case: Free circulation of goods placed on the market in accordance with excise duty suspension procedures, Although it has become a Community market commodity, But in accordance with the procedures described above for the marketing process, Whether the trademark belongs to "Used in trade activities" , Because if the answer is yes, It means that the use is damaging "Directive of the European First Council on the harmonisation of trademark laws in the Member States (The first 89/104/EEC No) " (Hereinafter referred to as "European Union regulation 89/104/EEC Number instruction" ) The first 5 Article specifies the trademark function?

[conclusion] The question the appellate court asked was, How to understand "European Union regulation 89/104/EEC Number instruction" The first 5 Provision of article. Although the above directive had been issued at the time of the case "Directive of the European Parliament and of the Council of the European Union on harmonisation of trademark laws in the Member States (The first 2008/95/EC No) " replace, But the ruling in this case still rests on the previous directive in force at the time of the dispute. "European Union regulation 89/104/EEC Number instruction" The first 5 The article stipulates that the trademark owner enjoys the exclusive right, The right to prohibit any third party from engaging in trade activities without permission, import, Promise to sell, Sell or store for the above purposes, Use the same or similar as the owner's trademark, Signs that may cause consumer confusion and misperception of risks, Goods of. The European Court of Justice stated in its ruling, Import excise taxes shall be paid before goods are placed on the Community market for free circulation, So this class of goods becomes "European Council on excise duty goods, And its storage, Instructions for transferring and regulating basic procedures (The first 92/12/EEC No) " (Hereinafter referred to as "European Union regulation 92/12/EEC Number instruction" , Has been "European Council directive on excise duties (The first 2008/118/EC No) " replace) Specified import goods. According to the European Court of Justice, The trademark owner does not need to wait for the free circulation of goods using the trademark to become a fact, They will also be prohibited from placing their products on the market without permission (namely, The act of importing and storing disputed goods for the purpose of placing them on the market) . As stated in the ruling, "European Union regulation 89/104/EEC Number instruction" The first 5 prescribed "use (using) " and "In trade activities (in the course of trade) " Should be understood as, Consider not only the direct relationship between traders and consumers; Business communication and business activities for economic gain should also be considered. To sum up, European court of justice, Without the trademark owner's permission, Van Caem The act of importing disputed goods, Composition is used in trade activities Bacardi Act of trademark. similarly, The act of executing excise duty suspension procedures and storing disputed goods in a tax warehouse, It also constitutes the use of trademarks. however, The European Court of Justice stated that, It doesn't follow from that TOP Logistics The provision of warehousing services also constitutes the use of a contested trademark; But can only say, The above actions make Van Caem It is possible to use a trademark. Finally, The European Court of Justice stated that, The basic function of the mark source is to identify the goods or services attached to the mark as coming from a particular business——The entity that controls the placing of the goods or services on the market. Therefore, The right of any third party to prevent the trademark owner from controlling the first placing of the goods on the market, Damage the basic function of the trademark.

[comment] The European Court of Justice agreed with an appeals court ruling "The commodities under the supervision of the customs' suspension procedures, such as external transfer or customs storage, do not infringe the exclusive rights of the trademark owner" Conclusion of, As the European Court of Justice has done before Philips Case and sum Nokia case (Case number: C-446/09, C-495/09) As stated in the conclusion of the ruling, The above behavior should be recognized as infringement of trademark rights, It must be demonstrated that there is a concurrent commercial activity or advertising campaign targeting EU consumers. For that matter, There is no need to distinguish between genuine and counterfeit goods ( "Parallel entry" ) . A different approach applies to goods that are already on the market and circulating freely, Even if the goods are then exported again, Eu consumers are not actually exposed to the product directly, But because the commodity is no longer subject to customs suspension procedures, Therefore, it should be treated as community market goods in the full sense. Although the European Court's ruling did not explicitly mention that, Van Caem Remove the item code involved, The act of preventing the origin of goods from being traced, Undoubtedly, it has damaged the function of logo source of commodity source enterprises. The ruling also clarifies, Genuine goods affixed with a registered trademark that are placed on the market by a third party for free circulation, The owner of a registered trademark has the right to control the first release of the goods into a specific market.

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