Linklaters tackles grey area with Macfarlanes

Macfarlanes and Linklaters are battling head-to-head in a case involving grey imports.

Macfarlanes is representing A&G Imports, which had brought a consignment of Davidoff aftershave into the UK that had originally been sold in Singapore.

However, at some point in the supply chain, the last two numbers of the batch number were removed to prevent tracing.

Linklaters, which is representing Davidoff, attempted to argue that this was an infringement of the trade mark as it would dissuade customers from buying the product as it spoilt its appearance.

Under the original sales agreement Davidoff did not expressly exclude sale in the European Economic Area (EEA) but argued that there should be a presumption in favour of the trade mark holder that it objects to unfettered distribution.

However, High Court judge Mr Justice Laddie ruled against Davidoff but referred the case to the European Court of Justice for clarification.

The summary judgment by Mr Justice Laddie is one of the most important in the commercial legal world this year, appearing to go against the recent decision of the European Court of Justice in Silhouette International Shmied GMBH KG v Hartlauer Handelsgesellchaft GMBH.

In Silhouette the European Court established that under UK trade mark law the trade mark owner still retains rights and can block the sale of its products within the EEA even if it has sold them itself outside the EEA.

Andrew Millmore, head of intellectual property at Macfarlanes, says: “This shows that the English court is not comfortable with the decision in Silhouette.”