European Union: CJEU Rules Brand Owners Can Prevent De-Branded Parallel Imports

The CJEU has held that the proprietor of a mark may take action against parallel importers of their products who remove all signs identical to their mark and replace them with other signs, without the consent of the trade mark owner and with a view to importing and trading the products for the first time in the EEA.

Mitsubishi Shoji Kaisha Ltd, Mitsubishi Caterpillar Forklift Europe BV v Duma Forklifts NV, G.S. International BVBA Case Case C 129/17 ECLI:EU:C:2018:594

In what may be considered a surprising result, the CJEU has held that a trade mark owner may take action against parallel importers of their products even where they remove all signs identical to their mark and replace them with other signs, without the consent of the trade mark owner and with a view to importing and trading the products for the first time in the EEA.


This case concerned Mitsubishi ('Mitsubishi') and Mitsubishi Caterpillar Forklift Europe BV ('MCFE'), who brought proceedings in Belgium against Duma Forklifts NV ('Duma') and G.S. International BVBA ('GSI').

Mitsubishi is the owner of four MITSUBISHI trade marks (two EU marks and two Benelux marks) ('Mitsubishi Marks'). MCFE is exclusively authorised to manufacture and place on the market in the EEA forklift trucks supplied under the Mitsubishi Marks.

Duma is a worldwide purchaser and seller of new and second-hand forklift trucks and is affiliated with GSI, which constructs and repairs forklift trucks that it imports and exports.

Duma and GSI claimed to have been acquiring, since 2009, from another company within the Mitsubishi group, forklift trucks which it has brought into EEA territory. Duma and GSI would place the trucks under a customs warehousing procedure, and then remove all the signs identical to the Mitsubishi Marks from the trucks and affix their own signs, replace the identification plates and serial numbers and modify the trucks so that they were compliant with EU standards. These modified forklift trucks would then be imported into the EEA and marketed within and outside the EEA.

Mitsubishi brought proceedings to prevent this. The Brussels Court of Appeal made a reference to the CJEU for a preliminary opinion on whether the replacement of the Mitsubishi trade marks amounted to a use that the proprietor of the Mitsubishi EU trade mark registration could rely upon in order to prevent importation and marketing of the modified forklift trucks in the EU.


The CJEU acknowledged the distinction between this case and previous cases regarding parallel imports. Earlier decisions concerned circumstances where the goods were already affixed with the marks at issue before being imported into and marketed in the EEA. Also, other earlier decisions involved circumstances where third parties used identical or similar signs to the marks at issue. Whilst these facts did not appear to be present in this case, the CJEU made the following observations:

  • In order to ensure the protection of the rights conferred by a mark, it is essential that the proprietor of the mark registered in one or more Member States could control the first placing of goods bearing that mark on the market in the EEA.
  • Removal of the signs identical to the mark and affixing new signs on the goods, with a view to first placing them on the market in the EEA adversely affected the functions of the mark.
  • Any act by a third party preventing the proprietor of a registered 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 undermined the essential function of the trade mark.
  • The cumulative effect of the above points meant that the circumvention of the proprietor's right to prevent the importation of those goods bearing its mark was contrary to the objective of ensuring undistorted competition.

The CJEU also indicated that if the relevant average consumer can nevertheless identify the goods as originating from the trade mark proprietor, on the basis of their outward appearance or model, this is likely to accentuate the effects of such harm.

The CJEU noted that the removal of the signs identical to the mark and the affixing of new signs on the goods precluded the trade mark proprietor from being able to retain customers by virtue of the quality of its goods and affected the functions of investment in and advertising of the mark. The CJEU continued to state that this was likely to impede the proprietor's use of that mark, in order to acquire a reputation likely to attract and retain consumers, and to serve as a factor in sales promotion or as an instrument of commercial strategy. Furthermore, the CJEU stated that such actions deprived the proprietor of the possibility of obtaining, by putting the goods on the EEA market first, the economic value of the product bearing that mark.

Finally, the CJEU held that 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, involved active conduct on the part of that third party, which, since it was done with a view to importing those goods into the EEA and marketing them there and was therefore carried out in the exercise of a commercial activity for economic advantage, would be regarded as use in the course of trade.

As a result, the CJEU held that the proprietor of a mark can prevent an unauthorised third party removing the signs identical to that mark and affixing other signs on the products placed in the customs warehouse with a view to importing them or trading them in the EEA, where they have not yet been marketed.


The CJEU has provided what will be seen as welcome guidance on the interpretation of the European trade marks legislation. The court noted that an objective of this legislation is to ensure undistorted competition. While this is not set out in terms in the relevant provisions, it is reflected in recital 2 of EU Trade Marks Regulation and indicated perhaps by the inclusion of the words "inter alia" in before the list of prohibited acts in Article 9(2).

Brand owners may take comfort from the CJEU's willingness to use its "purposive construction" of the EU trade mark legislation to favour their brand protection strategies.  There will be many people who will consider this judgment to go too far; time will tell how it is applied in cases seeking to interpret this decision, especially in jurisdictions with no unfair competition regime, such as the UK, where this broader interpretation will feel more unusual.

Read the original article on

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions