Quicksilver PTY Limited, NA Pali S.A.S. v Charles Robertson (Developments) Limited (trading as Trago Mills)

Date

26 July 2004

Legislation

Trade Marks Act 1994, ss. 9, 10, 12(1)

Keywords

trade mark infringement; genuine goods; consent of proprietor; trade mark exhaustion

Counsel

Emma Himsworth, Michael Silverleaf , Heather Lawrence

Solicitors:

Herbert Smith; Stephens & Scown

Judge:

Mr Alan Steinfeld QC (sitting as a Deputy Judge of the High Court)

Court:

High Court (Chancery Division)

Reported:

[2004] EWHC 2010, (2004) 27(9) I.P.D. 27,093.

Summary:

The Claimant was the proprietor of the US trade mark QUICKSILVER and sued the Defendant who operated a discount retail outlet in Cornwall known as "Trago Mills" for trade mark infringement.

It was common ground that the goods in question were genuine, but the claimant alleged that they were marketed without their consent and therefore that an infringement of the trade mark under ss.9 and 10 of the Trade Marks Act 1994 had taken place. The goods in question were manufactured in Turkey for export to Russia which was an area for which that manufacturer was licensed by the claimant. Payment was effected by a Russian consortium by means of a letter of credit involving a company domiciled in Spain. The Russian consortium defaulted on its payment meaning that title in the goods vested in the Spanish company. That company then sought to sell the QUICKSILVER branded goods it had acquired in Europe.

The Defendant purchased goods from the Spanish company and offered them for sale at Trago Mills.

The key issue was therefore whether the claimant was to be considered to having consented within the meaning of s.12(1) of the Trade Marks Act 1994 which states that:

"A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent."

The judge noted that the European Court of Justice in the case of Zino Davidoff SA v A&G Imports [2002] RPC. 20 had emphasised that the proprietor must show an unequivocal renunciation of its rights to oppose the placing on the market of the relevant goods and that implied consent cannot be inferred from mere silence of the proprietor.

Decision

The judge found that

• the claimant had not expressly consented to the sale of the goods in the EEA and that it was plain that they had not impliedly consented to the EEA sale of the goods;
• the key is the ECJ guidance from the Davidoff case (see above) that such consent "must be so expressed that an intention to renounce [the] rights is unequivocally demonstrated". In this case there was no such unequivocal demonstration.
• A licensee of a trade mark cannot in general give consent on behalf of the proprietor of that mark when the licensee is not licensed in respect of the ECJ.

In relation to the issue of consent see also the decision of the European Court of Justice in Peak Holding AB v Axolin-Elinor AB.