Manufacturers can prevent the onward unauthorised sale of demonstration samples bearing their trade marks, provided that certain conditions are met. This was the effect of the European Court of Justice judgment in Coty Prestige Lancaster Group GmbH v Simex Trading AG, Case C 127/09, which dealt with the unauthorised sale of Coty perfume testers.
The Community Trade Marks Directive provides that a trade mark owner shall not be entitled to prohibit use of the trade mark in relation to goods which have been put on the market in the Community under that trade mark by the owner or with his consent. It has previously been held that the rights conferred by the trade mark are exhausted only if the owner expressly or impliedly consented to a putting on the market of the goods.
In this case, it was held that Coty did not impliedly consent to putting the testers on the market for the following reasons: (a) the testers were made available, without transfer of ownership and with a prohibition on sale, to intermediaries who were contractually to use them only for the purpose of allowing their customers to test the contents; (b) Coty could at any time recall the testers; and (c) the testers were clearly distinguishable from bottles of perfume normally made available to the intermediaries, and were marked ‘Demonstration’ and ‘Not for Sale’.
Therefore the unauthorised sale of these testers infringed Coty’s trade marks.