26 April 2018Trademarks

AG clarifies ‘use’ of TM in Mitsubishi case

Removing a brand’s trademark from an item and re-applying another brand does not constitute use of the first trademark if the item has not previously been marketed in the territory, according to an EU advocate general (AG).

AG Manuel Campos Sánchez-Bordona gave his  opinion at the Court of Justice of the European Union (CJEU) today, April 26.

Japanese automobile company Mitsubishi Shoji Kaisha manages the Mitsubishi brand worldwide. This includes two EU trademarks, one for the word ‘Mitsubishi’ (registered in 2001) and one for the figurative logo associated with the brand (registered in 2000).

Both marks are registered in numerous classes including class 12, which covers cars, electric vehicles, and forklifts.

Trading company Mitsubishi Caterpillar Forklift Europe (MCFE), based in the Netherlands, offers a range of counterbalance and warehouse lift trucks and services. It holds the exclusive right to produce and market Mitsubishi forklift trucks inside the European Economic Area (EEA).

Belgian company Duma Forklifts sells second-hand forklift trucks. Another company, GS International (GSI), is linked to Duma. GSI repairs forklifts and adapts the trucks to enable them to meet European regulations, and then delivers them to Duma.

In 2009 Duma and GSI acquired trucks from a Mitsubishi company and removed their branding, as well as adapting them to meet European standards. They then fixed their own brands onto the trucks, and imported and sold the vehicles in the EEA.

Mitsubishi and MCFE filed a complaint with the Commercial Court of Brussels (Rechtbank van koophandel te Brussel) in 2009, requesting the cessation of Duma’s and GSI’s importing, unmarking and rebranding of the Mitsubishi trucks.

They claimed the practice of unmarking and rebranding the trucks, and the import of the same into the EEA, is a violation of their trademark rights. They also said such conduct was fraudulent.

Mitsubishi and MCFE argued that such conduct ignores the function of the product’s indication of origin and infringes the right of the trademark owner to control first marketing of the products in the EEA. They claimed consumers will continue to recognise the Mitsubishi trucks, even without the marks.

The court dismissed the matter.

On appeal, the Court of Appeal of Brussels (Hof van beroep Brussel) said it has “doubts about the limits of the rights conferred on the owner of the trademark” in the context of a third party who removes those marks.

It asked the CJEU to clarify whether, in this circumstance, the third party has “used” and therefore violated the registered trademark.

AG Campos Sánchez-Bordona noted that the re-marked forklift trucks are adapted by Duma and GSI, and are not sold under the brand of any other manufacturer but their own. Mitsubishi’s branding is therefore “not perceptible by the consumer”, he said, as there is no use of its registered marks.

Therefore, he recommended that use of a trademark has not occurred when the goods have not been previously marketed in the EEA, theyhave undergone alterations to enable them to meet European standards, and if the deletion of the marks has occurred for the purpose of marketing or importing the goods in the EEA with a new trademark, distinct from the original one.

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More on this story

27 July 2018   The Court of Justice of the European Union 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.