GRUNDFOS HOLDING A/S v ABCOT UK LIMITED & Anor

Under Trade Marks Act 1994 section 12(2), exhaustion does not prevent a trade mark proprietor from opposing further commercialisation where product alterations or regulatory non-compliance are liable to damage the trade mark’s reputation. This may include concealed product identifiers, missing safety material or conformity documentation, inadequate regulatory compliance, and non-proprietor components or altered housings.

On a summary-judgment application, credible evidence of those matters must be rebutted. A reseller with access to the goods and its supply chain cannot rely on its own failure to inspect the goods or investigate its suppliers.

The claimant, a Danish pump manufacturer and owner of the GRUNDFOS trade mark, sought summary judgment for trade mark infringement and passing off against a UK reseller and its director.

The reseller had obtained Grundfos pumps from Italy and sold them in the United Kingdom. The claimant relied on test purchases of eight pumps. It alleged that some had been altered, lacked instructions, safety information or declarations of conformity, had concealed identifiers, or failed applicable regulatory requirements.

The central issue was whether those circumstances gave the claimant legitimate reasons under section 12(2) of the Trade Marks Act 1994 to oppose further commercialisation despite exhaustion of trade mark rights.

1. Judgment for the claimant. The claimant was entitled to object under section 12(2) of the Trade Marks Act 1994 to commercialisation of each of the eight test-purchase pumps.

2. The claimant had adduced credible, largely photographic and tracing evidence. Once that evidence was raised, the reseller bore a modest burden of rebuttal. It had possessed the evidence for months and should have inspected the goods if it intended to dispute their condition. It could not rely on ignorance of the goods as sold or of its supply chain.

3. Concealing batch and product numbers prevented product-withdrawal and recall checks. That was liable to harm the reputation of the trade mark and its proprietor. Missing instructions, safety information and declarations of conformity, absence of CE marking, and undisputed failures to meet applicable pump-efficiency requirements likewise created regulatory or safety concerns capable of engaging section 12(2).

4. Replacing a pump housing, attaching a non-Grundfos wire or brass fittings, and removing a housing were changes in the goods’ condition. They engaged section 12(2), whether or not the reseller itself had made the alteration. Selling the goods unopened did not answer the proprietor’s objection to their commercialisation.

5. The court did not determine whether a partially removed compatibility list breached Annex I point 2(1)(e) to Commission Regulation (EC) 641/2009. The evidence and argument on the provision’s construction were insufficient. That issue was unnecessary because independent grounds established legitimate reasons in respect of the relevant pumps.

not stated in the judgment.