What’s happening?
Registering a trade mark grants the owner an exclusive, territorial right to use that trade mark in respect of the goods and/or services applied for. It is therefore, by its nature and design, limited in its application to (1) what the mark is, (2) the specificity of the goods and/or services it covers (e.g. its class(es) and specification wording) and (3) the territory in which the trade mark is registered.
A trade mark owner can enforce its registered mark in respect of infringing goods, whether those goods are manufactured, supplied, stored, advertised or sold, in the territory in which the trade mark is registered. There’s also potential infringement if the infringer targets consumers in the territory of protection. Potential remedies available to an owner include obtaining damages, an injunction and seizure and destruction of the infringing goods. The applicable national law can therefore provide relief in respect of acts performed in the national territory of protection.
However, the extent to which a trade mark owner can use its trade mark to prevent an infringer from storing the infringing goods in a country in which the trade mark is not protected, is currently being considered in Germany in the German Supreme Court (Tradeinn Retail Services S.L. v PH Case C‑76/24). The infringing goods are intended to be sold in the territory covered by the protection of the registered trade mark.
The case concerns the interpretation of Article 10(3)(b) of the EU Trade Mark Directive (EU) 2015/2436 (the TMD). The German Supreme Court has sought clarity from the Court of Justice of the EU (CJEU) on the following two points:
1. under Article 10(3)(b) of the TMD, can an owner of a national trade mark prevent an infringer based in another country from stocking goods in that country, where those goods would be infringing if they were in the trade mark’s territory of protection? The infringing goods are expected to be sold in the territory in which the trade mark is protected; and
2. within the meaning of Article 10(3)(b) of the TMD, does the concept of storing/holding/stocking the goods depend on the realistic possibility of being able to access the infringing goods or is the possibility of being able to influence the person with access to those goods sufficient?
Why is this important?
Thought and care must always be taken in circumstances where it’s established that an infringer is not based or domiciled in the country where the registered trade mark is protected. More so also where the infringing products and/or acts are not committed in the trade mark’s protected territory.
But provided the infringing goods are meant for consumers in the registered trade mark’s territory of protection, practically, it does not matter where: (1) the infringer is based, (2) the goods are stored or (3) the website on which the goods are offered is hosted.
If the infringing act (such as operating a website or trading as an online shopfront) is committed outside the EU but targets consumers in the EU then the trade mark will have been infringed (L’Oréal and Others (C‑324/09))).
A trade mark owner may take action against a third party which has direct or indirect control over the storing/holding/stocking of the goods, so long as the goods are being held for the purpose of offering or marketing them for sale in the territory in which the trade mark is protected.
What should you do?
If you trade across borders, whether within Europe or globally, you should consider your brand protection and enforcement strategy and specifically where it would be most effective (both financially and from an enforcement perspective) to register your brand. Also consider your sales practices and any operational elements involved in your business which are based overseas, including your supply chain, manufacturing or distribution processes, so that you can proactively monitor potential infringement and ensure that you can enforce protection of your brand.
Disclaimer
This information is intended for general informational purposes only and does not constitute legal advice. We recommend seeking professional advice before taking any action on the information provided. If you would like to discuss your specific circumstances, please feel free to contact us on 0800 2800 421.
