"I suppose nearly all members of the public would think that you
cannot infringe a trade mark if you are just selling the genuine goods
of the proprietor to which he has applied his trade mark. Many
(probably most) trade mark lawyers think that ought to be the rule.
After all, trade marks are the badge of the owner, a sign by which the
consumer can know: "Here are the goods or services of a particular
owner. I can rely on that sign."
In the language of the Directive the function of a trade mark is to
"guarantee the trade mark as an indication of origin".
So the public would be surprised to know (and perhaps somewhat
resentful of the fact) that the law of the EEA is such that if genuine
goods are available outside Europe much cheaper than they are here,
traders cannot buy them and import them for sale here, unless the
trade mark owner has consented. Even though the trade mark tells the
truth, its use can be prevented without that consent.
The policy behind this rule has been called "fortress Europe." It has
very substantial implications since nearly all goods (save perhaps
some raw materials) bear trade marks. It means traders can use trade
marks to partition Europe from the rest of the World Market. This can
sometimes have beneficial effects (e.g. trade marks are perhaps the
easiest of intellectual property rights to invoke to stop re-
importation into Europe of pharmaceuticals sold cheaply in third world
countries for local use).
But generally the rule is self-evidently rather anti-competitive and
protectionist. Our task is not to consider whether the rule is good or
bad from an economic perspective. It is to apply it."
Said by LORD JUSTICE JACOB - Mastercigars Direct Ltd v Hunters &
Frankau Ltd & Ors [2007] EWCA Civ 176 (08 March 2007)
http://www.bailii.org/
P.S.
Read all this judgement, to know more about the trade mark owner's
unequivocal consent to the importation of non-EU goods into the
European Union in practice.
www.parallelimportseurope.com
