IP case law Court of Justice

Referral C-772/18 (Yhtiö A, 3 Dec 2018)



Is the amount of the advantage received from an alleged infringement of a trade mark by a private individual relevant when assessing whether his conduct is the use of a trade mark in the course of trade within the meaning of Article 5(1) of the Trade Marks Directive 1 or a private matter? If a private individual uses a trade mark, does use in the course of trade require the satisfaction of criteria other than the requirement of economic advantage obtained from the transaction in question concerning the trade mark?

If the economic advantage must have a certain degree of substantiality, and a person, on the basis of the triviality of the economic advantage received by him and the non-fulfilment of other possible criteria of use in the course of trade, may not be regarded as having used a trade mark in the course of his own trade, is the condition of use in the course of trade within the meaning of Article 5(1) of the Trade Marks Directive satisfied if a private individual uses a trade mark on behalf of another person as part of that other person’s trade, where he is not, however, an employee in the service of that other person?

Does a person keeping goods use a trade mark in relation to goods within the meaning of Article 5(1) and (3)(b) of the Trade Marks Directive if the goods marked with the trade mark, sent to a Member State and released into free circulation there, are received on behalf of a reselling company and stored by a person, into whose possession the goods have passed, who does not carry on the importation and storage of goods and who does not have a licence to operate a customs warehouse or tax warehouse?

May a person be regarded as importing goods marked with a trade mark within the meaning of Article 5(3)(c) of the Trade Marks Directive if the goods were not imported at the person’s request, but the person provided his address to a reseller and received on behalf of the reseller the goods released into free circulation in the Member State, kept them in his possession for some weeks, and released them for transmission to a third country outside the European Union for the purpose of resale there?


Case details on the CJEU website (external link)


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