5 Eur. L. Rep. 1 (2001)

handle is hein.journals/eurlawreo5 and id is 1 raw text is: [2001] EuLR

A            JOOP! GmbH v M & S TOILETRIES LTD
Outer House, Court of Session
Lord Kingarth
4 April 2000
Trade marks - Exhaustion of rights - Importation of goodsfrom outside EEA without
B knowledge ofproprietor - Whether proprietor entitled to prohibit importer from
marketing goods - Whether implied consent given by trade mark holder - Directive
89/104/EEC, Arts 5, 7- Trade Marks Act 1994, ss 10, 12
Facts
C   Section 12 of the Trade Marks Act 1994, which was passed, inter alia, to give effect to
Directive 89/104/EEC, provides that a registered trade mark is not infringed by the use
of the trade mark in relation to goods which have been put on the market in the
European Economic Area (EEA) under that trade mark by the proprietor or with his
consent.
The pursuers made and marketed high quality toiletries, cosmetics and related
D   goods, and in connection with this business were proprietors of a number of registered
trade marks. In June 1998 a consignment of packaged units of perfume and aftershave
were detained by officers of HM Customs and Excise. The consignment had originally
been shipped from Singapore and the products found therein were genuine products
manufactured by a licensee of the pursuers and contained in packaging applied by the
licensee. The defenders were the consignees and importers of the consignment.
The consignment came from a company in Singapore which had entered into a dis-
E   tributorship and service agreement with the pursuers' licensee, under which it had
been granted exclusive rights to import, promote, sell and distribute the products
throughout South East Asia and which had undertaken not to sell the products out-
side the territory. The pursuers had not been given any notice that the consignment
was to be marketed in the United Kingdom and had not placed any of the consign-
ment on the market in the EEA, nor had they consented to any other party putting a
F   consignment on the market in the EEA.
The pursuers sought, inter alia, interdict against the defenders or anyone on their
behalf from disposing of or otherwise dealing with any or all of the consignment. The
pursuers claimed to be entitled to prohibit the defenders from marketing the products
forming the relevant consignment within the United Kingdom under the said trade
marks without their consent. They sought to rely on the primary rights conferred on
trade mark proprietors by s. 10 of the Trade Marks Act 1994. They claimed that they
G   had not consented to the goods being put on the market in the EEA in terms of s. 12
of the Act.
The defenders contended that the pursuers had consented to the placing of the rel-
evant goods on the market within the EEA since the pursuers or their licensee had
placed the goods on the market without condition or qualifications as to where they
might be sold. They argued that there was no indication on the packaging applied by
H   the pursuers' licensee that notice should be given to the pursuers or their licensee that
the consignment was to be marketed in the United Kingdom. They further argued that
the pursuers had placed the goods on the market without imposing sufficient restric-
tions on the further marketing such as would operate to prevent all distributors in the

Q 2001 Hart Publishing Ltd.
CCC 1091-3297/01/010001-13

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