The Court of Justice of the EU has given two recent judgments related to trademarks. In C-98/13, it held that EU customs legislation applies to goods ordered from outside the EU, and in C-65/12 it clarified the concept of “due cause” and the obligation to tolerate the use of a sign similar or identical to a trademarked sign.

C-98/13 Blomqvist, given on 6 February 2014, concerned the application of EU customs legislation to counterfeit products ordered online from outside the EU. Martin Blomqvist, a Danish national, had ordered a counterfeit Rolex from a Chinese website. The watch was seized by customs. The Rolex company contacted Mr Blomqvist, asking him to consent to the destruction of the timepiece, a request which Mr Blomqvist refused. The case was heard in Danish courts, and finally referred by the Danish Supreme Court to the Court of Justice of the EU in order to interpret EU customs legislation and the definition of “infringement”.

The Court held that counterfeit goods ordered online from outside the EU could be seized under EU customs legislation. Furthermore, goods can be seized even when the goods are for private use and therefore the purchaser is not infringing IP rights. Moreover, it is not necessary to show that the party offering goods online was targeting customers in that Member State, but instead it is sufficient that the counterfeit goods enter the territory of the Member State. This decision is expected to strengthen the protection of EU rights holders by confirming that customs legislation applies to online sales from outside the EU.

C-65/12 Leideplein v Red Bull, given on 6 February 2014, dealt with the good faith use of a trademarked sign and the definition of “due cause” in EU law. Mr de Vries, an entrepreneur using the Bull Dog brand, had been banned by Dutch courts from using the word and figurative mark relating to “The Bulldog” in his own brand of energy drinks, due to infringement of Red Bull’s sign. The Red Bull brand was registered in the Netherlands before Mr. de Vries registered his own brand. However he had used The Bulldog brand from 1975 onward, inter alia, in the name of a famous Amsterdam coffee shop. In court proceedings initiated by Mr. de Vries for the right to use the brand, the Hoge Raad of the Netherlands referred the case to the Court of Justice, asking what constituted “due cause” to use a registered trademark under EU legislation.

The Court held that the proprietor of a trade mark could be obliged, within “due cause” under Article 5(2) of First Council Directive 89/104/EEC, to tolerate the use by a third party of a similar or identical sign, if it was demonstrated that the sign was being used before the mark was filed and that it was being used in good faith. The Court particularly emphasized the significance of how well known the sign was with the relevant public, the proximity between the relevant goods and the economic and commercial significance of using the sign. While there is still uncertainty concerning the full meaning of “due cause” in EU law, this ruling has to a degree clarified the requirements for protection under the “due cause” exception.