The IPKat reports Honda Motor Co Ltd and another v David Silver Spares Ltd [2010] EWHC 1973 (Ch), a 28 July 2010 ruling by George Leggatt QC, sitting as a deputy judge of the Chancery Division (England and Wales), only available on Lexis Nexis at present so until there's a freely available version, [there is now: http://www.bailii.org/ew/cases/EWHC/Ch/2010/1973.html] which might shed light on why such a hopeless cause got to court at all, I'll leave the detail to the Kat and summarise (and ensure I don't plagiarise) here.
It's one of many cases involving parrallel imports of motorbikes and spares. Honda sued for infringement of their CTM and UK trade marks, claiming that the defendant was trading in spares that had not been placed on the market in the EEA by Honda or with their consent. The defendant sought to strike the claim out or to have summary judgment, arguing that it was entirely speculative and lacking in particularity
The deputy judge dismissed the claim, reiterating the well-worn principle that even when the goods have been placed on the market outside the EEA by the trade mark owner the rights can be asserted to stop importation into the EEA. I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
Where consent is argued to establish that the trade mark rights are exhausted, it must relate to every individual item in respect of which exhaustion is pleaded (onerous) and must be positively expressed (the Kat notes that it may be implied, provided it is unequivocal, so again the report of the case appears to be a bit lacking). The trader alleging that there has been consent must prove it: it is not for the trade mark owner to show an absence of consent. The burden of proof is only reversed if there is a real risk of partitioning of markets.
The defendant had not shown that Honda's claim lacked any reasonable basis or had no real prospect of success. Honda did not have to show that the parts the defendant was selling were placed on the market outside the EEA: it only needed to assert on reasonable grounds that the defendant had used the trade marks in the EEA for goods for which they were registered and that Honda had not consented.
It will be interesting to see later how the gaps in this account are filled! I hope there'll be a full transcript of the judgment in time for the next podcast.
[Now that I have found the judgment on BAILII, I'll revisit this posting when I have time.]
It's one of many cases involving parrallel imports of motorbikes and spares. Honda sued for infringement of their CTM and UK trade marks, claiming that the defendant was trading in spares that had not been placed on the market in the EEA by Honda or with their consent. The defendant sought to strike the claim out or to have summary judgment, arguing that it was entirely speculative and lacking in particularity
The deputy judge dismissed the claim, reiterating the well-worn principle that even when the goods have been placed on the market outside the EEA by the trade mark owner the rights can be asserted to stop importation into the EEA. I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
Where consent is argued to establish that the trade mark rights are exhausted, it must relate to every individual item in respect of which exhaustion is pleaded (onerous) and must be positively expressed (the Kat notes that it may be implied, provided it is unequivocal, so again the report of the case appears to be a bit lacking). The trader alleging that there has been consent must prove it: it is not for the trade mark owner to show an absence of consent. The burden of proof is only reversed if there is a real risk of partitioning of markets.
The defendant had not shown that Honda's claim lacked any reasonable basis or had no real prospect of success. Honda did not have to show that the parts the defendant was selling were placed on the market outside the EEA: it only needed to assert on reasonable grounds that the defendant had used the trade marks in the EEA for goods for which they were registered and that Honda had not consented.
It will be interesting to see later how the gaps in this account are filled! I hope there'll be a full transcript of the judgment in time for the next podcast.
[Now that I have found the judgment on BAILII, I'll revisit this posting when I have time.]
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Motor Bike Spares I thought any student of trade mark law would have been able to work that out, which is why the full report must surely reveal that there is more to the case than meets the eye.
The transcript is now online at http://www.bailii.org/ew/cases/EWHC/Ch/2010/1973.html
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