Judgment of the ECJ of 25 July 2018 (Mitsubishi v. Duma and GSI, case C‑129/17) ECLI:EU:C:2018:594

Background:

Mitsubishi, established in Japan, is the proprietor of a number of trade marks, including the EU word mark MITSUBISHI, for, inter alia, goods in Class 12 of the Nice Agreement, including motor vehicles, electric vehicles, and forklift trucks.

MCFE, established in the Netherlands, is exclusively authorized 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.

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.

In proceedings between Mitsubishi Shoji Kaisha Ltd and Mitsubishi Caterpillar Forklift Europe BV, on the one hand, and Duma Forklifts NV and G.S. International BVBA on the other, concerning a request that, inter alia, the latter cease removing signs identical to the marks of which Mitsubishi is the proprietor and affixing new signs on Mitsubishi forklift trucks acquired outside the European Economic Area (EEA), the Hof van Beroep te Brussel (Court of Appeals of Brussels) decided to stay the proceedings and to refer the following questions to the Court of Justice:

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 trade mark proprietor, of all signs identical to the trade marks 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)?

c) 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 Judgment of the ECJ that answers the questions raised by the Court of Belgium contains the following decision:

Article 5 of Directive 2008/95 and Article 9 of Regulation No. 207/2009 must be interpreted as meaning that the proprietor of a mark may oppose a third party removing all the signs identical to that mark and affixing other signs, without its consent, on products placed in the customs warehouse, such as in the main proceedings, with a view to importing them or trading them in the EEA where they have never yet been marketed.

The court has, in essence, made the following considerations in order to reach this decision:

On one hand, the Court considers that the removal of signs identical to the mark prevents the goods for which that mark is registered from bearing that mark the first time that they are placed on the market in the EEA and, hence, deprives the proprietor of that trade mark of the benefit of the essential right, which is conferred on him by the case-law to control the initial marketing in the EEA of goods bearing that mark.

On the other hand, the Court understands that the removal of the signs identical to the mark and the affixing of new signs on the goods with a view to their first placing on the market in the EEA adversely affects the functions of the mark.

In fact, as regards the function of the indication of origin, it suffices to recall that, in the judgment of 16 July 2015, TOP Logistics and Others (C-379/14, EU:C:2015:497), the Court has already held that any act by a third party preventing the proprietor of a registered trade mark in one or more Member States from exercising his right to control the first placing of goods bearing that mark on the market in the EEA, by its very nature undermines that essential function of the trade mark

The removal of the signs identical to the mark and the affixing of new signs on the goods precludes the trade mark proprietor from being able to retain customers by virtue of the quality of its goods and affects the functions of investment and advertising of the mark where, as in the present case, the product in question is not still marketed under the trade mark of the proprietor on that market by him or with his consent.

By infringing the trade mark proprietor’s right to control the first placing of goods bearing that mark on the market in the EEA and by adversely affecting the functions of the mark, the removal of the signs identical to the mark and affixing of new signs on the goods by a third party, without the consent of the proprietor, with a view to importing into or placing those goods on the market in the EEA and with the aim of circumventing the proprietor’s right to prohibit the importation of those goods bearing its mark, is contrary to the objective of ensuring undistorted competition.

An operation consisting, on the part of the third party, of removing signs identical to the trade mark in order to affix its own signs, involves active conduct on the part of that third party, which, since it is done with a view to importing those goods into the EEA and marketing them there and is therefore carried out in the exercise of a commercial activity for economic advantage, may be regarded as a use in the course of trade. In this sense, it must be borne in mind that in a judgment, the Court has also found that use, in the course of trade, of a sign identical or similar to the mark presupposes that the use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (see the judgment of 16 July 2015, TOP Logistics and Others, C-379/14, EU:C:2015:497, paragraph 43 and the case-law cited). It has clarified that the terms ‘use’ and ‘in the course of trade’ cannot be interpreted as meaning that they refer only to immediate relationships between a trader and a consumer and, in particular, that there is use of a sign identical to the mark where the economic operator concerned uses the sign in its own commercial communications.