On 25 September 2018, the Court of Appeal of Antwerp (Hof van beroep/Cour d'appel) (the "Court") ruled on a dispute between spirits company Bacardi & Company Ltd ("Bacardi") and Alcimex, a beverage wholesaler. Bacardi contended that specific bottles offered for sale by Alcimex infringed its trade marks as they were marketed in the European Union without its consent. After gathering sufficient proof of the infringement of its trade mark through a descriptive seizure (beschrijvend beslag/saisie-description), Bacardi started a procedure on the merits to claim damages.
Pursuant to Article 9(2)(b) of Regulation 207/2009 of 26 February 2009 on the Community trade mark, Article 9(3)(b) of Regulation 2017/1001 of 14 June 2017 on the European Union trade mark and Article 2.20(2) of the Benelux Convention on Intellectual Property of 25 February 2005 (the "BCIP"), trade mark holders may prohibit the offering of goods, their putting on the market or their stocking for these purposes under its European or Benelux trade marks in the European Union and the Benelux. However, this right does not extend to goods that have been put on the market in the European Union (or Benelux) under that trade mark by the proprietor or with his consent. This limitation to the rights of trade mark owners is known as "exhaustion".
In the case at hand, Alcimex first argued that it had not infringed the intellectual property rights of Bacardi since the contested goods had been brought onto the EU market with Bacardi's consent. It added that Bacardi had not provided enough evidence to show that it had not provided consent for each and every contested good.
The Court held that the burden of proof in trade mark infringement procedures initially rests on the trade mark owner as it must show that it owns a trade mark and that the alleged infringer used that trade mark. However, once sufficient proof to that effect has been produced, it is then for the alleged infringer wishing to rely on the principle of exhaustion to demonstrate that the trade mark holder consented to bringing the contested goods into the European Union (or Benelux). As stated on several occasions by the Court of Justice of the European Union (the "ECJ") (in, for example, Sebago and Davidoff), the consent of the trade mark holder must be shown for each individual item of the product in respect of which exhaustion is contended.
Given that Alcimex had not provided sufficient evidence to that effect, the Court held that Bacardi's trade marks had not been exhausted with regard to the contested goods.
Alcimex then argued that as a storage facility, it could not be held to infringe Bacardi's trade marks.
Relying on the reasoning of the ECJ in Top Logistics (see VBB on Belgian Business Law, Volume 2015, No. 7, available at ww.vbb.com), the Court dismissed this argument as well. Indeed, the ECJ held that the holder of a trade mark is not obliged to wait for the release for consumption of the goods covered by its trade mark to exercise its exclusive right. It can also object to specific acts committed without its consent before the release for consumption. Such acts include the importation of the goods concerned and their storage for purposes of putting them on the market. The Court also noted that Alcimex was in fact not solely a storage facility as it had already sold certain contested goods.
The Court concluded that Alcimex had infringed Bacardi's trade mark rights and granted Bacardi damages. It also ordered the destruction of the contested goods and the publication of extracts of the judgment in two national newspapers.
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