On 27 June 2012 the Supreme handed down its judgment in this case which concerned the controversial topics of a trade mark owner’s ability to restrict the importation of genuine goods bearing its trade mark and the availability of ‘euro defences’ to the alleged infringer.

Oracle are manufacturers of computer systems, workstations and related goods and own various trade marks for use in connection with computer hardware. M-Tech is a supplier of computer hardware and had supplied hardware bearing Oracle’s trade marks to a purchaser in the EEA in 2009. M-Tech had obtained the hardware in question from a broker in the US and had imported the products into the EEA. By the time of the Supreme Court hearing, it has been agreed that the importation and sale by M-Tech of the Oracle hardware was the first marketing of those goods in the EEA and that Oracle had not consented to their being put on the market by M-Tech. It seemed, therefore that Oracle’s exclusive right to control the first marketing in the EEA of goods bearing its trade marks had not been exhausted under Article 7.1 of the Trade Mark Directive (2008/95/EC) and so M-Tech’s activities constituted an infringement under Article 5(1)(a).

M-Tech argued that Oracle’s rights were not enforceable. In support of its argument it alleged that Oracle’s behaviour was contrary to Treaty provisions relating to the free movement of goods (Articles 34 to 36 TFEU), or amounted to anti-competitive behaviour (contrary to Article 101 TFEU) or an abuse of process. M-Tech accused Oracle of deliberately trying to control and secure for itself the second-hand market in its computer hardware. It did this, M-Tech claimed, by refusing to provide information about the provenance of particular equipment to independent resellers, imposing restrictive terms in its distribution agreements with its authorised dealers, and aggressively enforcing its trade mark rights.

The Supreme Court was unconvinced by M-Tech’s arguments, chiefly because its view was that they were collateral to the right that Oracle was seeking to enforce. This was a situation where Oracle were seeking to prevent the first marketing of goods bearing its trade marks in the EEA. That was something that was specifically authorised by Articles 5 and 7.1 of the Trade Mark Directive which are themselves provisions that the Court of Justice has confirmed are fully in accordance with the requirements of the TFEU.

It is fairly clear from the judgment that, even though the Supreme Court found in Oracle’s favour, it did not approve of its tactics for controlling the secondary market in its goods. It stated (at paragraph 26) that “[Oracle] cannot be prevented from doing something which is in itself entirely lawful and consistent with the principle of the free movement of goods, simply because it proposes to do something else as well which is unlawful and inconsistent with that principle” and added (at paragraph 29) “it may well be that M-Tech has a perfectly good cause of action against [Oracle] based on articles 34 to 36 of the treaty for damages for preventing them from selling [Oracle] products”.