The relevant facts in this case are as follows:

Alpargatas, S.A. is the proprietor of the various figurative and mixed trademarks with the word element HAVAIANAS to identify, among other goods in class 25, clothing, footwear and headgear. Alpargatas Europe, S.L.U. is the exclusive distributor and licensee of these trademarks in the territory of Europe, the Middle East and Africa.

Marcas por Menos, S.L., in 2015, acquired in Panama 21,480 original Alpargatas sandals, identified with these brands, introduced them into the customs of Bilbao under the customs deposit regime and they were stored in a facility in Riofrío (Burgos). Later, those sandals were offered and sold to Happy Sport, LTD, for marketing in the European Economic Area (EEA).

The SC upheld the judgment of the Provincial Court of Alicante declaring the existence of trademark infringement by the defendant Marcas por Menos S.L..

The grounds for dismissal of the appeal brought by Marcas por Menos S.L. is the fact that it is considered to be established that the defendant

offered and sold the goods (sandals bearing the applicants’ trade mark) to a company in the United Kingdom (Happy Sport, LTD), on terms which indicated that they were to be marketed in the United Kingdom (they were made available to the purchaser at the port of Dover and the sizing was adapted to the size required in the United Kingdom), as was in fact the case, it must be concluded, as the judgment under appeal did, that the defendant offered and sold the goods in the knowledge that they were to be marketed in the United Kingdom.

Article 9 of Council Regulation (EC) 207/2009 of 26 February 2009, which is claimed to be infringed and is applicable to the case (because of the time at which the facts took place), in paragraph 1 sets out the scope of the ius prohibendi which the registration of a trade mark confers on its proprietor and then, in paragraph 2, specifies various forms of conduct through which this prohibition may be infringed. Paragraph (b) refers to “offering the goods, putting them on the market or stocking them for those purposes or offering or providing services under the sign”, and paragraph (c) to “importing or exporting the goods under the sign”.

It recalls that the judgment of the CJEU of 18 October 2005, Colgate (C-405/03), interprets Article 9(1) and (2)(c) of EC Regulation 40/94 ‘as meaning that the proprietor of a trade mark may not oppose the mere entry into the Community, under the external transit or customs warehousing procedure, of original goods which have not previously been put on the market in the Community by the proprietor of the trade mark or with his consent’. The proprietor of the trade mark may not make the placing of such goods under the external transit procedure or the

the external transit procedure or the customs warehousing procedure to the condition that there is, at the time of entry of the goods into the Community, a known end-use in a third country, stipulated, where appropriate, in a contract of sale’. However, it also states that the offering or sale ‘necessarily involves the marketing in the Community of the goods bearing the trade mark’, with the consequent ‘impairment of the exclusive right conferred on the proprietor of the trade mark (…) by Article 9(1) of the Regulation, irrespective of the place of establishment of the addressee of the offer or of the purchaser and irrespective of the provisions of the contract ultimately concluded as regards any restrictions on resale or the customs status of the goods. The offer or sale thus constitutes ‘use [of the trade mark] in the course of trade’ within the meaning (…) of Article 9(1) of the Regulation. It follows that the proprietor of the trade mark may oppose such use by application of (…) Article 9(2)(b) of the Regulation”. And the CJEU concludes that “the concepts of ‘offering’ and ‘putting on the market’ of goods, referred to (…) in Article 9(2)(b) of the Regulation, may include, respectively, the

offering and sale of original goods bearing a trade mark which have the customs status of non-Community goods where the offering is made and/or the sale takes place while those goods are under the external transit procedure or the customs warehousing procedure. The trade mark proprietor may oppose the offering or sale of such goods where it necessarily entails their being placed on the market in the Community”.

STS (Civil) of 14 December 2021.