ECJ Clarifies Trade Mark Use Of Goods Stored In Customs Warehouse

On 16 July 2015, the Court of Justice of the European Union ("ECJ") responded to a request for a preliminary ruling by the Dutch Court of the Hague (Gerechtshof Den Haag) (Case C-379/14, TOP Logistics BV and Van Caem International BV v Bacardi). The ECJ confirms that imported goods released for free circulation but placed under a duty suspension arrangement infringe Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (the "Trade Mark Directive" - now replaced by EU Directive 2008/95).

In the case at hand, several consignments of alcoholic beverages produced by Bacardi were stored at the request of Van Caem, a Dutch import-export company, at the premises of Mevi (subsequently TOP Logistics), a licensed customs and excise warehouse operator. The goods were initially placed under a customs suspension arrangement for external transit (T1). Subsequently some of the goods were released for free circulation and placed under a 'suspensive customs procedure'.

Bacardi had not consented to the marketing of the goods at issue in the EEA and claimed infringement of its Benelux trade marks.

In a judgment of 19 November 2008, the Court of First Instance of Rotterdam held that the introduction into the EEA of the goods at issue infringed Bacardi's Benelux trade marks. TOP Logistics brought an appeal before the Court of Appeal (Gerechtshof Den Haag). In an interlocutory judgment of 30 October 2012, the Court of Appeal held that, as long as the goods at issue had the status of T1 products, there was no infringement of Bacardi's Benelux trade marks and referred the question on the duty suspension arrangement to the ECJ.

In particular, the Dutch Court requested whether, in relation to goods placed under a duty suspension...