In a judgment handed down in the case of Class International v SmithKline Beecham on 28 August 2003, the Court of Appeal at The Hague posed six preliminary questions for the ECJ. Our firm handles this case on behalf of GlaxoSmithKline.
Class International, whose registered office is in Delfzijl, the Netherlands, had purchased original toothpaste products in South Africa, which had the Aquafresh trade mark belonging to SmithKline Beecham affixed to them. These products were not brought into the EEA for the first time by SmithKline Beecham or with its permission. This consignment of toothpaste entered the Rotterdam harbour by boat at the end of February 2002 and was stored in a bonded warehouse while in transit, after which SmithKline Beecham - alerted by Customs - had it attached. In its judgment the Court held that it was not reasonable to assume that these toothpaste products had been sold and will be delivered to a customer whose registered office is situated within the EEA, but deemed that one could also not exclude the possibility that the first buyer is based in the EEA.
In particular, the parties' dispute primarily concerns the question as to whether the temporary storage in a bonded warehouse of original branded goods having the Customs status of T1 and/or the transshipment of these goods to countries outside the EEA should be held to constitute the use of a trade mark.
The Court has formulated the following preliminary questions:
Is a trade mark proprietor entitled to oppose the introduction of goods bearing a trade mark under the terms of the Directive and/or Regulation 40/94 sourced from other countries into the territory of a member state (in this case that of the Netherlands or the Benelux countries) without his permission for the purposes of transhipment or transit trade as referred to below?
Does 'using a sign in the course of trade' as referred to in Article 5(1) read in conjunction with Article 5(3)(b) and (c) of the Directive and Article 9(1) read in conjunction with Article 9(2)(b) and (c) of Regulation 40/94 include the storage in a Customs office or bonded warehouse in the territory of a member state of original branded goods (bearing a trade mark as defined in the aforementioned directive, the BMW and/or Regulation 40/94) which have not been brought into the EEA by the trade mark proprietor or with his permission, which are sourced from outside the EEA and which bear the Customs status of non-Community goods (for example, T1 or AGD)?
Would it make any difference to the answers to questions (1) and (2) if the final destination of these goods had been established or not when they entered the aforementioned territory, or whether an agreement of sale had been concluded - or not - with a customer in another country in respect of these goods?
Is it relevant for the purposes of answering questions (1), (2) and (3) whether there are any incidental circumstances, such as:
the fact that a dealer who is the owner of the goods in question or who at any rate has disposal over them, and/or is involved in parallel trade, has his registered office in one of the member states?
the fact that a dealer, who has his registered office in a member state, offers these goods for sale from this member state or sells them to another dealer whose registered office is in a member state, while the place of delivery has not yet been established?
the fact that a dealer who has his registered office in a member state, offers these goods for sale from this member state or sells them to another dealer whose registered office is in a member state, while the place of delivery of the goods offered for sale or sold in this manner has been established but their final destination has not, be it with or without an explicit statement or contractual limitation to the effect that non-Community (transit) goods are involved?
the fact that a dealer who has his registered office in a member state, offers these goods for sale or sells them to another dealer whose registered office is outside the EEA, while the place of delivery and/or the final destination of these goods has or has not been established?
the fact that a dealer who has his registered office in a member state, offers these goods for sale or sells them to another dealer whose registered office is outside the EEA, whom the (parallel) dealer knows or has good reason to suspect, will on-sell the aforementioned goods or supply them to end users within the EEA?
Must the term 'offering' in the provisions referred to in question (1) be interpreted in such a manner that it is also deemed to include the offer (for sale) of original branded goods (bearing a brand within the context of the Directive, the BMW and/or Regulation 40/94) in the circumstances referred to in questions (3) and (4), which are stored in a Customs office or bonded warehouse in the territory of a member state, which have not been brought into the EEA by the trade mark proprietor or with his permission, which have been sourced from outside the EEA and which bear the status of non-Community goods (for example, T1 or AGD)?
Which party bears the onus of proof with regard to the actions referred to in (1), (2) and (5)?
An important case for both trade mark owners and parallel-importers.
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| Remco de Ranitz |
