The decision of the ECJ was based on the following facts:
Duma Forklifts from Belgium purchased forklifts made by Mitsubishi on the world market outside the EEA. Duma Forklifts moved these forklifts to a so-called customs warehouse, where it removed the Mitsubishi trademarks from the forklifts and attached its own markings. Only then did Duma Forklifts move the remodelled forklifts to the EEA and distribute them there without reference to the original manufacturer or use of the Mitsubishi brands.
The Mitsubishi parent company is the owner of various EU-Trademarks “Mitsubishi”. Mitsubishi brought an action to the Belgian courts against Duma for infringement of those Union trademarks by placing on the market the forklifts modified as described above. The commercial court in Brussels rejected the complaint. Following Mitsubishi’s appeal, the Brussels Court of Appeal stayed the proceedings and referred the question to the European Court of Justice as to whether the complete removal of foreign trademarks could constitute the use of such trademarks.
With regard to German trademarks, the Federal Court of Justice (FCJ) has repeatedly ruled that the complete removal of a third-parties’ trademark (so-called “de-branding”) cannot be prohibited by means of trademark law (e.g. FCJ GRUR 2008, 160 – Cordarone, para. 24). However, the de-branding and subsequent affixing of one’s own trademarks to market the goods under these trademarks (so-called “re-branding”) may, under certain circumstances, be anti-competitive as a sales or advertising impediment or because of misleading information about the commercial origin of the goods (BGH GRUR 2004, 1039, 1041 – SB-Beschriftung). In the present proceeding, the Advocate General of the ECJ also referred to this case law of the FCJ as well as the legal situation in other national trademark laws of EU member states. By interpreting the wording, the systematics and the telos of the term “use”, the Advocate General concluded in his comments to the Court that the complete removal of a trademark cannot constitute use of a trademark.
Surprisingly, the ECJ took a different view. In its decision, the ECJ focuses in particular on the – in comparison to the core function of certificate of origin – other functions of trademarks, in particular the guarantee of the quality of the goods and the communication, investment and advertising functions of a trademark. Rightly so, these additional trademark functions may be impaired if a third party sells a product originally originating from the trademark owner under his own trademark as his own efforts and performance. However, the ECJ saddles the horse from behind: Because de-branding or re-branding can impair these further trademark functions, any active action by the infringer for the purpose of first placing the trademark on the market in the EEA which impairs these further trademark functions should suffice as a prohibited use of a trademark. In the opinion of the ECJ, the removal of a trademark, even more so in a customs warehouse, i.e. outside the scope of protection of the EU-Trademark, and the subsequent placing on the market in the EEA of the goods modified in this way constitutes use of the (completely removed) trademark in the EU.
According to the ECJ, the trademark infringement should also be regardless of the fact whether or not the target groups in the EU subsequently recognize the branded goods as such from the production of the original trademark owner. Re-branding deprives the original trademark owner of the opportunity to bind customers to the quality of his goods by using his signs on his products and renders corresponding investments in the trademark image worthless. What is astonishing about this reasoning is that the isolated consideration of the impairment of individual trademark functions obviously takes place without prior examination of the question of the use of the trademarks impaired by this actions.
It remains to be seen whether the ECJ has taken this view only for a specific special case. However, it may also be possible to transfer the principles of the decision to other constellations:
It is conceivable, for example, that the removal of a trademark in non-EU countries (for which the EU-Trademark does not grant any protection) could already be regarded as (trademark infringing) use of the EU-Trademark if the removal of the trademark takes place for the purpose of the subsequent planned placing on the market in the EEA. Furthermore, a trademark infringement may also be affirmed in the event that the original trademark is removed from goods already placed on the market in the EEA by the trademark owner. This would very significantly affect car-tuning and parallel imports of medicines. Finally, it remains to be seen whether the FCJ in Germany will also follow the ruling practice of the ECJ. Ultimately, German national law is based quite considerably on the EU Trademark Directive. Recently, the Trademark Law Modernization Act has brought further adaptions of EU law into German Trademark law. In any case, the further decision-practice of the ECJ in these constellations remains intruiging.