• Trader buys branded forklift trucks outside of the EEA, removes trade marks and adds its own distinctive signs
  • No suggestion of trader using marks that are the same or similar to the brand owner's marks
  • Does this amount to a breach of EU trade mark laws?

What's it about?

Mitsubishi (the claimant) manufactures forklift trucks, and sells them in the EEA under various EU and Benelux trade marks. Duma (the defendant) also supplies forklift trucks in the EEA. In particular, this case concerns Duma's practice of acquiring, outside the EEA, Mitsubishi-branded forklift trucks, which it then brings into the EEA and places under a customs warehouse procedure. While the trucks are under that procedure, Duma entirely removes Mitsubishi's trade marks, makes alterations to the trucks so that they comply with EU standards, and then adds new identification plates, serial numbers and Duma's own marks. Duma then imports them into the EEA, and markets them inside and outside the EEA.

Why does it matter?

Mitsubishi claimed (in the Belgian courts) that this behaviour amounted to an infringement of the rights conferred on Mitsubishi as owner of the relevant marks. Specifically, Article 9 of the EU Trade Mark Regulation ((EC) 207/2009) provides that the owner of an EU trade mark is entitled to prevent third parties from bringing goods into the EU from third countries which bear (without authorisation) a trade mark which is the same or confusingly similar to the trade mark owners registered marks.

The Belgian court referred the following question to the Court of Justice of the EU (CJEU):

1. Does EU trade mark law prevent a third party from "debranding" branded goods without the brand owner's consent where the goods have never been sold in the EEA (for example, when placed in a customs warehouse) with a view to placing them on sale in the EEA?

2. Does it make any difference to the answer if the third party rebrands the goods with its own distinctive signs? Also, does it make a difference if an average consumer would still be able to identify the goods as originating from the original brand owner?

The CJEU found that Duma's activities did infringe Mitsubishi's registered trade marks. In particular, the court noted that by removing Mitsubishi's marks, Duma was depriving Mitsubishi of the "essential right" conferred by case law to control the initial marketing in the EEA of goods bearing its marks. Further, removing Mitsubishi's trade marks prevented Mitsubishi from being able to retain customers by virtue of the quality of its goods, therefore undermining the function of a trade mark.

Now what?

The key feature of this case is that Duma was not using marks identical or similar to Mitsubishi's marks, and so, at first glance, it appears not to concern trade mark infringement at all. However, the CJEU looked to the underlying principles of trade mark law, including case law, in a case that clearly improves the position for brand owners in the battle against parallel imports.

Mitsubishi v Duma Forklifts, Case C-129/17