How not using a trade mark becomes use of a trade mark

Abstract

Court of Justice of the European Union (CJEU), Judgment in Mitsubishi v Duma, C-129/17, EU: C: 2018: 594, 25 July 2018 Contrary to the Advocate General’s Opinion, the CJEU decided that removal of a trade mark amounts to trade mark infringement. In the European Union (EU) the proprietor of an EU trade mark (EUTM) has the exclusive right to prohibit third parties from using a sign that is identical or similar to the trade mark for identical or similar goods for which the trade mark is registered. Hence, ‘use’ of a sign is an essential element in EU trade mark law. EU legislature has provided a non-exhaustive list of acts that are considered use of a trade mark which the proprietor can repress. Typically, a trade mark proprietor can, for instance, oppose affixing the sign to goods, offering the goods, stocking them and importing them. Over the years, in several Member States the question was raised whether the removal of a trade mark constitutes use of that trade mark. The Benelux Court of Justice decided as early as 1992 that the removal of a trade mark from goods does not constitute use of that trade mark (BCoJ 6 November 1992 AP v Valeo). In addition, the highest German court (Bundesgerichtshof) decided that the removal of a trade mark does not satisfy the criteria for trade mark infringement (BGH I ZR 148/04). This is also in line with UK judgments (see for instance Boehringer Ingelheim KG & Anor v Swingward Ltd [2008] EWCA Civ 83).