The respondents (R) were granted summary judgment in their claim against the appellants (A) for trade mark infringement. A appealed. A had imported certain computer hardware from the USA into the UK to which was affixed R’s trade marks.
Information which would otherwise enable sellers to identify whether and when the computer hardware had been first placed on the European Economic Area (“EEA”) was not published by R nor would R publish its database with a view, it is said, to making trade in authentic EEA first marketed goods difficult.
A raised a defence that R’s practices conflicted with Article 28, 30 and 81 of the EC treaty.
At first instance the judge found that A’s defence had no real prospects of success. The court admitted that R’s averment whilst its agreement with distributers infringed competition laws there was no sufficient link between competition breaches and trade mark enforcement.
Arguments on appeal
A argued that the judge had not read articles 5 and 7 of Directive 89/104 consistently with article 28 and 30 of the EC Treaty. Art 81 of the EC treaty is available to raise as a defense to trade mark infringement proceedings.
There was a possible argument that R’s practices did conflict with art 28 and 30 of the EC Treaty and that the Trade Mark Directive was not a complete legislative format so that defences raised outside the parameters of the that directive were not necessarily improper.
As Lady Jutice Arden put it: “…I consider that this court should direct that Oracle makes an application in the Chancery Division for a case management conference (CMC) to be held as soon as practicable. This case clearly has important financial and economic implications not just for the parties but also for others involved in the grey market in Oracle, and possibly other, computer hardware and goods. The economic function of parallel imports and the grey market is controversial. The judge can consider with the parties at the CMC whether to make an order expediting the trial, and, if so, any further directions appropriate to assist in ensuring that expedition, particularly bearing in mind that this case may not stop at our shoresâ€¦I am not saying that the defences raised will prevail as a matter of law, as that is not the issue before this court. The issue is whether the summary judgment ought to have been granted. I consider that it should not have been granted and accordingly I would grant permission to appeal and allow this appeal and I would also make the other direction for a CMC discussed above.”