Law & Practice

EUROPEAN UNION: ‘Use in the Course of Trade’

Published: June 15, 2020

Ceren Aytekin Galatasaray University Istanbul, Turkey INTA Bulletins Committee - Europe Subcommittee

On April 30, 2020, the Court of Justice of the European Union (CJEU) ruled in Case C-772/18 that a person—despite not engaging in trade professionally—is regarded as using a trademark in the course of trade pursuant to Article 5(1) of Directive 2008/95/EC (now Directive (EU) 2015/2436) if: (1) the goods received are obviously not intended for private use; (2) the goods have been sent from a third country to the address of that person and are thereby released for free circulation and stored in a member state; and (3) the trademark in question is affixed to the goods without the consent of the proprietor.

In April 2011, B, a natural person residing in Finland, received from China a consignment of 150 ball bearings weighing in total 710 kilograms, goods typically used as spare parts in transmission mechanisms, generators, and engines, and in the construction of bridges and tramways. The INA international word mark, owned by A, was affixed upon the bearings. After completion of the customs clearance, B took the consignment home and delivered it weeks later to a third party for export to Russia. For his services, B received cigarettes and a bottle of brandy.

Subsequently, criminal proceedings for trademark infringement were brought against B in Finland. B was acquitted for lack of deliberately committing an offense. The case eventually reached the Supreme Court of Finland, which stayed the proceedings to request a preliminary ruling from the CJEU. The CJEU was asked to determine whether the services provided by B could be considered use of the INA trademark in the course of trade.

The CJEU held as follows: It must be ascertained solely on the grounds of objective factors whether the conditions laid down in Article 5(1) are satisfied. A trademark proprietor may, as a rule, rely on the exclusive rights conferred by a trademark against economic operators within the context of a trading business only. Transactions which go beyond the scope of private activity, whether because of their volume, their frequency, or other characteristics, must be considered as activities in the course of trade. Given the particulars of the goods in question, the services provided by B fall within the scope of Article 5(3)(c), that is, importing or exporting the goods under the sign.

The CJEU further noted that it did not matter who owned the goods for determining whether they were used in the course of trade. Moreover, the import and the release for free circulation already justified the finding that a person acted in the course of trade; there would be no need to take into account subsequent dealings with those goods. Finally, the CJEU stated that the amount or the significance of the remuneration received would be of no relevance when determining whether a person’s conduct constituted use of a trademark in the course of trade.

The Supreme Court of Finland will now continue with the determination of the case taking into account the preliminary ruling from the CJEU.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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