The decision follows a request for a preliminary ruling from the Supreme Court of Finland on the question of the distinction between use of a trade mark in the course of trade and purely private conduct, in particular where a private individual uses the trade mark for another in the course of his business. Other questions related to the receipt and storage of goods dispatched into a Member State and released for free circulation there and the subsequent transport to a third country outside the European Union for resale there.
In the main proceedings, a natural person “B”, residing in Finland, had received from China a consignment of 150 ball bearings on which a trade mark of a third party was affixed. After customs clearance was completed, B took the goods from the customs warehouse at Helsinki airport to his home. A few weeks later, the bearings were delivered to a third party for export to Russia. B was only involved in the storage of the infringing goods as an intermediary. In return he received only a carton of cigarettes and a bottle of brandy.
In the course of criminal proceedings conducted for trade mark infringement, B was acquitted on the grounds that he could not be proved to have deliberately committed an offense. However, the court prohibited B from continuing or resuming the conduct in question and ordered B to pay damages to the trade mark proprietor. B appealed against that judgment.
The Court of Appeal held that Mr. B had not acted with the intention of obtaining economic benefit and that the ‘remuneration’ received by B (cigarettes and a bottle of brandy) was merely the consideration for the temporary storage of the goods on behalf of a third party. Consequently, B did not use the sign in the course of trade and claims for damages were unfounded. The trademark owner appealed against this decision to the Supreme Court in Finland, which referred the case to the Court of Justice for clarification of the term “use in the course of trade” within the meaning of Article 5(1) and (3)(c) of Directive 2008/95 (repealed and replaced by Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks).
The Supreme Court pointed out that the Court of Justice had decided in its judgment of 16.07.2015 (C-379/14 – TOP Logistics) that the owner of a tax and customs warehouse who merely stores goods for a third party, on which a sign identical or similar to a trademark is affixed, does not use this sign. The question was whether that case-law could be applied mutatis mutandis to the main proceedings, in which a person imported, held and temporarily stored goods for a bottle of cognac and cigarettes on behalf of a third party before collecting them for onward dispatch to a third country.
Furthermore, the Finnish Court pointed out that it is not clear from the ECJ’s case-law whether the amount of the economic advantage obtained by a private individual as a result of an alleged infringement of trade mark rights is a criterion relevant to the meaning of whether there has been use of the trade mark in the course of trade.
The Finnish Supreme Court referred four questions for a preliminary ruling, which can be summarized as follows: Can it be assumed that a trade mark has been used in the course of trade by a person who, in order to obtain a specific advantage, provided his address for the import, stored and temporarily warehoused goods which are manifestly not intended for private use on behalf of a third party before delivering them for further shipment to a third country?
In its answer to the questions referred for a preliminary ruling, the ECJ states that the question of “use in the course of trade” within the meaning of (now) Article 10 (2) of the Directive must be answered solely on the basis of objective criteria. In principle, the rights of the trademark owner can only be invoked in connection with a commercial activity. If, by reason of their scale, frequency or other characteristics, the activities in question extend beyond the scope of a private activity, the seller is acting in the course of trade.
The ball bearings in question weighed 710 kg and were thus obviously not intended for private use. Accordingly, these transactions were to be regarded as part of a business activity.
A person who gives his address as the place to which the goods in question are to be dispatched, who carries out customs clearance for those goods or arranges for it to be carried out and releases them for free circulation, makes an ‘import’ within the meaning of Article 10(3)(c) of the Directive (formerly Article 5(3)(c)), irrespective of whether the import was carried out on the initiative of that person.
The ECJ points out that the fact that a person has imported such goods and released them for free circulation is sufficient for a finding that the goods are being traded in the course of business, irrespective of how the goods are subsequently handled (e.g. temporary storage or placing on the market within the Union or export to a third country).
It is not important for the presumption of use in the course of trade that the private individual did not use the trade mark in his own business dealings, but as an intermediary in the economic interest of a third party. Use is assessed irrespective of the ownership of the goods.
Finally, the amount of the remuneration received by a person in return for his activity is irrelevant for the assessment of the existence of “use of a trade mark in the course of trade”.
Against this background, the ECJ holds that the use of a trademark in the course of trade includes accepting a delivery and retaining infringing goods for the benefit of third parties for the purpose of reselling them in a non-European country, even if these acts are performed by an intermediary who does not engage in trade as an occupation.
This ruling represents a further step towards securing the rights of trademark owners against the import of infringing goods into the European Union. The scope of action of counterfeiters by involving private individuals as intermediaries is hereby restricted
