The latest decision of the Spanish Supreme Court on 14 December 2021 confirms the Judgment of the Provincial Court of Alicante which, declares the existence of a trademark infringement by the defendant MPM, recognizing the right of the owner of the trademark Havaianas, for the territories of Europe, the Middle East and Africa, to forbid offering the products, marketing or storing them for such purposes or offering or providing services with the trademark (Article 9. 2 of Council Regulation (EC) No. 207/2009 of 26 February 2009 (the “Regulation“) and Article 34.3 of the Trademark Act).
The company who is the owner of trademark in dispute, is the owner of the following European Union trademarks for, inter alia, clothing, footwear and hats in class 25:
- Trademark no. 8 170 953, graphic, consisting of:
- Trademark No. 3.772.431, mixed, consisting of:
- Trademark No. 8.664.096, mixed, consisting of:
- And, Trademark No. 12 092 722, mixed, consisting of:
The company MPM acquired 21,480 original sandals of the Havaianas brand in Panamá and introduced them at the Bilbao customs office under customs warehousing arrangement. Subsequently, these products were offered and sold to HS for marketing in the European Economic Area (EEA), without having obtained the authorization of the trademark owner.
Article 9 of the Regulation, the infringement of which is complained of, sets out in paragraph 1 the scope of the ius prohibendi which registration of the trademark confers on its owner and then, in paragraph 2, specifies various forms of conduct by means of which that prohibition may be infringed. In subparagraph (b) it refers to “offering the goods, placing them on the market or stocking them for those purposes or offering or providing services under the sign”, and in subparagraph (c) to “importing or exporting the goods under the sign”.
The doctrine set out in the judgment of the Court of Justice of the European Union of 18 October 2015 is also applicable to this case because it indicates the cases in which the trademark owner may oppose the trader who has placed original goods bearing a trademark under the external transit procedure or the customs warehousing procedure: “if the offering or sale necessarily entails the marketing in the Community of the goods bearing the trademark, there is an infringement of the exclusive rights conferred on the owner of the trademark (…) The offering or sale, then constitutes “use [of the trademark] in the course of trade” within the meaning of Article 5(1) of the Directive and Article 9 (1) of the Regulation.”
The main conclusions to be drawn from this resolution are as follows:
- A trader who has introduced original goods bearing a trademark under the external transit procedure or the customs warehousing procedure may infringe the rights of the trademark owner in certain cases;
- the trademark owner may oppose the offering or sale of such goods, even if they are placed under the external transit or customs warehousing procedure, where they necessarily involve their being put on the market in the EU. However, the owner cannot invoke his right merely on the ground that he could later market them in the EEA; and,
- the burden of proof of the offering or sale of the non-EU goods is on the trademark owner, with circumstantial evidence being sufficient and no direct proof that MPM knew that the Havaianas trademark goods were intended to be marketed within the EU. In this case, the Court concludes that it has been proved by circumstantial evidence (they were made available to the purchaser at the port of Dover and the sizing was adapted to that required in the United Kingdom, as was ultimately the case).
Therefore, as owners of a trademark, we can oppose the import and export of the goods associated with that trademark, as well as the offering and marketing of those products.
