Background
Parallel importers have in the past relied on the
doctrine of “implied consent” in an attempt to circumvent the general rule
that a trade mark owner is entitled to use his EU trade mark rights to
prevent importation into the EU of goods placed on the market outside the
EU without his consent. In November last year, the ECJ all but closed the
door on this argument (see
IPnewsflash dated 20 November 2001), ruling that the consent of a
trade mark owner could only be implied where he had unequivocally
demonstrated that he had renounced the right to oppose the parallel
importation.
Following the ECJ ruling, Levi Strauss sought summary judgment against Tesco and Costco arguing that consent could not be implied on the facts and, therefore, Tesco and Costco’s importation of non-EU sourced Levi jeans constituted trade mark infringement.
The decision
Pumfrey J. rejected all of a number of legal
arguments raised by Tesco and Costco, remarking that those based on the
European Convention on Human Rights were “devoid of substance”, and
granted the application for summary judgment.
This decision is perhaps unsurprising in the light of the judgment of the ECJ, but is nonetheless a clear victory for trade mark owners. Pumfrey J. declined to make a further reference to the ECJ. Unless the European Commission changes its views in this area, and in so doing prompts a Europe-wide change to harmonised trade mark law, the outlook for parallel importers remains bleak.
© Herbert Smith 2002
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