CJEU disagrees with AG on TM use in Mitsubishi win
The Court of Justice of the European Union (CJEU) clarified the type of conduct which counts as “use in the course of trade” in trademark infringement proceedings on Wednesday, in a win for the Mitsubishi brand.
Japanese automobile company Mitsubishi Shoji Kaisha manages the Mitsubishi brand worldwide and has registered numerous trademarks in the EU.
For example, the company owns the word mark ‘Mitsubishi’ (registered in 2001) and the figurative logo associated with the brand (registered in 2000) in numerous classes, including class 12 for forklifts.
Trading company Mitsubishi Caterpillar Forklift Europe (MCFE) has the exclusive right to produce and market Mitsubishi forklift trucks inside the European Economic Area (EEA).
In 2009, Duma Forklifts acquired trucks from Mitsubishi. GS International (GSI), which repairs and adapts trucks to European standards for Duma, removed the Mitsubishi branding in addition to adapting the vehicles to meet European standards.
The companies put their own branding onto the trucks, and imported and sold them in the EEA.
Mitsubishi and MCFE filed a complaint with the Commercial Court of Brussels (Rechtbank van koophandel te Brussel) in 2009. They claimed consumers will continue to recognise the Mitsubishi trucks even without the marks.
The companies asked the court to prevent Duma and GSI from importing, unmarking, and rebranding the Mitsubishi trucks. Mitsubishi and MCFE claimed this practice was a violation of their trademark rights, as well as amounting to fraudulent conduct.
The court dismissed the matter.
On appeal, the Court of Appeal of Brussels (Hof van beroep Brussel) said it had doubts about the limits of the rights of the trademark owner in the context of a third party who removes those marks.
The Court of Appeal asked the CJEU to clarify whether the third parties had “used”, and therefore violated, Mitsubishi’s trademark rights.
Under article 5(1) of the trademark directive, “use in the course of trade” is necessary to establish infringement of a trademark.
In April, advocate general (AG) Manuel Campos Sánchez-Bordona opined that removing a brand’s trademark from an item and re-applying different branding is not sufficient to constitute use of the first trademark where the product has not been previously marketed in the EEA.
The AG said Mitsubishi’s branding is “not perceptible by the consumer”, so there is no “use in the course of trade”.
However, earlier this week the CJEU disagreed with the AG and ruled that the de-branding and re-branding activities can be considered use in the course of trade.
The CJEU said the removal of the branding prevents the goods associated with that mark from featuring it the first time they are placed on the market in the EEA.
This “deprives” the owner of the mark of the “essential” right to control the initial marketing of goods bearing that mark in the EEA, the court explained.
It added that this conduct adversely affects the advertising functions of the mark in a manner that is “contrary to the objective of ensuring undistorted competition”.
As Duma and GSI opted to pursue the de-branding and re-branding as a “commercial activity with a view to economic advantage”, their behaviour may be regarded as use in the course of trade, the CJEU concluded.
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