Q&As

Is it trade mark infringement for a UK-based importer of grey market goods to use in its advertisements of those goods a trade mark belonging to a US-based entity?

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Produced in partnership with Olivia Gregory and Robert Cumming of Appleyard Lees
Last updated on 20/03/2018

The following IP Q&A produced in partnership with Olivia Gregory and Robert Cumming of Appleyard Lees provides comprehensive and up to date legal information covering:

  • Is it trade mark infringement for a UK-based importer of grey market goods to use in its advertisements of those goods a trade mark belonging to a US-based entity?
  • Grey market goods
  • Goods put on the market in the EEA
  • Goods put on the market outside the EEA
  • Consent
  • Descriptive use and comparative advertising
  • Conclusion

Is it trade mark infringement for a UK-based importer of grey market goods to use in its advertisements of those goods a trade mark belonging to a US-based entity?

Whether there is UK infringement in the above circumstances depends upon:

  1. where the goods of the trade mark owner were put on the market

  2. whether the goods were put on the market by the trade mark owner/with its consent, and

  3. whether the trade mark in the advertisement by the UK-based importer is used descriptively or to make a fair comparison

Grey market goods

Grey market goods are genuine, non-counterfeit goods of the trade mark owner. They have, however been imported into an economic area and sold there without the consent of the trade mark owner. See Practice Note: Parallel imports.

Goods put on the market in the EEA

Once goods are put on the market in the EEA by a trade mark owner or with its consent, the trade mark owner’s rights are ‘exhausted’ in all Member States (Article 7(1) of Directive (EC) 2008/95, Trade Marks Directive). When rights are exhausted, a trade mark owner can’t stop others using its trade mark in relation to goods that have been put on the market with its consent. Use includes advertising (Dior v Evora).

Therefore, so long as goods were put on the market in the EEA with the trade mark owner’s consent, even

Related documents:
Key definition:
Infringement definition
What does Infringement mean?

A term typically used in relation to intellectual property (IP) rights that refers to certain (infringing) acts being performed in the UK without the consent of the proprietor of the relevant IP right, or where that right may be registered in the UK, the applicant for that IP right.

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