Adidas-Salomon AG v. Microhaven Ltd, Richard Sinclair, Geoffrey McKee (trading as Geoffrey Black Sportswear), Geoffrey Black Ltd

Date

24 March 2003

Legislation

Trade Marks Act 1994, s.10(1)

Keywords

trade mark exhaustion; imports; consent; summary judgement

Counsel

Simon Malynicz, R. Sukul

Solicitors

Linklaters; C.M. Atif & Co.

Judge

Peter Smith J

Court

High Court (Chancery Division)

Reported

[2003] E.T.M.R. 94

Summary

Adidas sold sports clothing under the ADIDAS trade mark in a number of different countries and claimed that the defendants had imported infringing goods into the United Kingdom. The third and fourth defendants had purchased clothing from the first and second defendants.

The goods were manufactured by Adidas outside the EU and could not be sold within the UK without the consent of Adidas following the principles set out by the European Court of Justice in Levi Strauss & Co v Tesco Stores Limited [2003] C.M.L.R. 11. Following the principles set out in that case it was necessary for Smith J. to determine whether the defendants had Adidas’s consent.

On an application for summary judgment, Smith J. noted that there was no pre-existing contractual relationship between the parties and consequently that it was for the defendants to persuade him that they had a real prospect of establishing a consent from the claimant to the importation of the products into the EEA. Despite the defendants’ submissions that these matters required investigation, disclosure, and cross-examination, Smith J. concluded that the issue was suitable for summary judgment. The defendants sought to rely on a letter from Adidas stating that certain of the goods were genuine but this did not establish that the necessary consent to importation had been given.

Decision:

Smith J. therefore concluded that the third and fourth defendants had failed to establish that they had any real prospect of success of establishing that they had acquired these goods for the purpose of importing into the EEA with the consent of the claimants and it followed that there was no defence to their claim.

This case is effectively only an application of the principles in the Levi-Strauss case (see above) and is illustrative of the strict rules on infringement which are applied to genuine goods that have become unauthorised "grey imports".