Jean Christian Perfumes Ltd & Anor v Thakrar (t/a Brand Distributor or Brand Distributors Ltd)

An oral licensee of a Community trade mark may bring infringement proceedings with the proprietor’s consent, since the formalities applicable to national marks do not displace the specific provisions governing Community trade mark licences. Oral use of a registered mark may also constitute infringing use. For infringement by importation, merely transporting goods to a bonded warehouse in the Community is insufficient; importation requires introduction for the purpose of putting the goods on the Community market. A person who actively participates in a plan to bring unauthorised branded goods into the UK for sale, and assists their subsequent supply, may be liable for infringement even where another party formally imports the goods.

The claim was brought by the registered proprietor and licensee of Community Trade Mark No 5349162, Stunning, concerning two consignments of unauthorised perfume goods manufactured by the authorised producer but supplied in unauthorised packaging.

The central issue was whether the defendant’s involvement in arranging, importing, offering for sale and selling the goods in the UK amounted to trade mark infringement. The judgment also addressed whether an oral Community trade mark licensee had standing to sue and whether oral use of a mark could infringe.

1. Standing of oral licensee. Section 28(2) of the Trade Marks Act 1994 requires a licence of a UK registered trade mark to be in writing. The directly effective Community Trade Mark Regulation No 40/94 contained specific provisions instead. Article 22(3) permitted a licensee to bring proceedings with the proprietor’s consent, and article 22(4) permitted intervention to recover damages. Article 16 therefore did not impose the domestic writing requirement where articles 17 to 24 provided otherwise. An oral licensee of a Community trade mark could sue with the proprietor’s consent.
2. Oral use. Oral use of a Community trade mark could constitute infringing use. Article 9(2) gave examples of infringing use but did not exclude oral use. The possibility of registering sound marks and the reasoning implicit in Holterhoff supported that conclusion.
3. Importation and liability. Merely transporting goods to a bonded warehouse in the Community was insufficient to establish infringement by importation. Applying Class International v Colgate Palmolive, importation required introduction of the goods into the Community for the purpose of putting them on the market. The first consignment nevertheless involved importation into the UK on behalf of BDL, and the defendant was actively involved in its subsequent supply. The apparent authority of the delivery agents was sufficient.
4. Application to the facts. The defendant had identified the UK as a potential market, helped arrange the consignments, participated in bringing them into the UK and played an active part in selling and delivering them to UK customers. The court rejected his evidence that his involvement ended at the Rotterdam warehouse or that he was unaware that the goods had reached the UK. The principles concerning facilitation, procuring and participation in a common design, referred to through Townsend v Howarth, did not assist him on the facts.
5. Disposition. The claim for infringement of Community Trade Mark No 5349162 succeeded.