Bacardi case a breeze? Trade marks and duty suspension arrangements

Bacardi case a breeze? Trade marks and duty suspension arrangements

Can a trade mark proprietor use its trade marks to prohibit a third party from placing goods covered by that mark under the duty suspension arrangement after having introduced them, without the proprietor’s consent into the EEA? Adam Rendle, senior associate, and Catherine Ferrity, associate, at Taylor Wessing, comment on TOP Logistics and BV and Van Caem International BV v Bacardi: C-379/14

What is the background to this case?

In 2006, several shipments of Bacardi products were transported to the Netherlands from a non-EU state at the request of the distributor, Van Caem. These goods were then stored with TOP Logistics in the port of Rotterdam.

The goods were placed under a customs suspension arrangement for external transit or customs warehousing, and given T1 goods status which is a tax arrangement applied to the production, processing, holding and movement of products. Some of the goods were then released for free circulation into the EEA under a separate excise duty suspension agreement and were placed in a tax warehouse, the import duties having been paid.

Bacardi launched proceedings against TOP Logistics and Van Caem in 2008 on the basis that the shipments of goods had been brought into the EEA without its permission (ie they were grey goods) and therefore infringed its Benelux trade marks.

The Hague Court of Appeal ruled that as long as the goods had T1 status they were not infringing Bacardi’s trade marks. However, it sought a preliminary ruling from the Court of Justice of the European Union (CJEU) in relation to whether the marks were infringed once the goods at issue had been placed under the separate duty suspension arrangement. This applies to goods such as alcoholic beverages and tobacco when the goods are imported but payment of excise duty on them is suspended. The import duties had been paid but, because the goods were still under the duty suspension arrangement, excise duties had not been paid and the goods could not have been released for consumption.

What was the court asked to address?

The CJEU was asked, in essence, whether a trade mark proprietor can use its trade marks to prohibit a third party from placing goods covered by that mark under the duty suspension arrangement after having introduced them, without the consent of the proprietor, into the EEA and having released them for free circulation.

What are the challenges of preventing a third party from imp

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