Durán-Corretjer SLP

On 21 December 2017 the Court of Justice issued a preliminary ruling that brought clarification on the legal question of trade mark exhaustion of the global trade mark “Schweppes”, interpreting article 7(1) of Directive 2008/95/EC, read in the light of article 36 TFEU. (Case C-291/16).

The request was made in the course of proceedings on parallel imports brought by Schweppes S.A. against Red Paralela S.L. and Red Paralela BCN S.L., before the Barcelona Commercial Court No. 8 where different owners had rights on identical trade marks within the EEA, as the original proprietor split the trade mark resulting in national registrations belonging to different owners.

In this case, the trade mark Schweppes is owned in all EEA Member States except the UK by one company, the plaintiff of this case: Schweppes S.A., while the owner of the trade mark in the UK is an independent company, i.e: Coca-Cola/Atlantic Industries. The latter company obtained the ownership of the trade mark in the UK by assignment of the plaintiff.

The CJEU decision states that a trade mark proprietor cannot oppose to the import of identical goods bearing the same mark originating in another Member State in which that mark, which initially belonged to that proprietor, is now owned by a third party which has acquired the rights thereto by assignment, when, following that assignment,

– the proprietor, either acting alone or maintaining its coordinated trade mark strategy with that third party, has actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark,

or

– there exist economic links between the proprietor and that third party, inasmuch as they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of the trade mark, so that it is possible for them to determine, directly or indirectly, the goods to which the trade mark is affixed and to control the quality of those goods.

Conclusion

This ruling shows that even in cases of different ownership of the same trade mark in different countries belonging to the EEA, the relationship between the different owners regarding the use of the trade mark may impact in the right of the proprietor to prevent parallel imports within the EEA. Therefore, these aspects must be taken into account when concluding assignment agreements and cooperation agreements of the same trade mark by two or more parties.

In this case, it is now the turn of the Barcelona Commercial Court to apply the ruling and to determine whether all the conditions for exhaustion are met in the pending proceedings.