The UK Supreme Court today allowed an appeal against a decision of the Court of Appeal which had held that a parallel importer’s “Euro-defences” under Articles 34 to 36 and 101 TFEU and the EU principle of abuse of rights had a real prospect of success.
The defendant had imported a number of computer disk drives bearing the Sun trade marks from the USA into the UK. The claimant brought proceedings against it for infringement of registered UK and Community trade marks and sought summary judgment. The defendant resisted the application on the basis that the enforcement by the claimant of its trade mark rights was calculated to obstruct the free movement of goods between Member States or to distort competition in the EEA market.
The application for summary judgment succeeded before Kitchin J, but the Court of Appeal allowed the appeal, holding the defences to be arguable.
Lord Sumption, with whose Judgment Lord Walker, Lord Clarke, Lord Reed and Lord Carnwath agreed, held that the matters raised by the defendant did not amount to a defence to the claim for trade mark infringement: there was no relevant connection between the exercise of the claimant’s right to control the first marketing of its trade-marked goods in the EEA and any breach of the Treaty alleged by the defendant. The appeal was therefore allowed and the Order of Kitchin J restored.
Geoffrey Hobbs QC and Guy Hollingworth, instructed by Nabarro LLP, acted for the successful appellants in the Supreme Court.