Intellectual property/telecommunications: Marketing of trademarked products

United Kingdom
Marketing of trademarked products

The ECJ has ruled that, when trademarked goods have been marketed in the EU, either by the trademark owner or with his consent, a reseller may not only resell those goods but also market them, provided that the use of the trademark does not seriously damage the reputation of that mark. The trademark owner cannot rely on the Trademarks Directive to oppose the use of the trademark by the reseller who habitually markets articles of the same kind but not necessarily of the same quality. This question arose in Dutch proceedings between Parfums Christian Dior and Evora, a chain of chemists, concerning advertising carried out by Evora for Dior products.

In separate proceedings, the ECJ has ruled that a trademark owner can rely the EC Treaty to prevent a third party from relabelling goods. This question arose in proceedings initiated by a Dutch transport and warehousing firm against a company producing and marketing whisky.

The Court confirmed that goods may be relabelled if the trademark owner uses its right to oppose the marketing of relabelled products so as to contribute to the artificial partitioning of the single market, such as by isolating national markets. In addition, it has to be shown that relabelling does not affect the original condition of the product, that the presentation of the relabelled product does not damage the reputation or the trademark and its owner, and that the person performing the relabelling tells the trademark owner about the relabelling before the products are put on sale. These are questions for the national court to decide.