Can infringing tester products be destroyed?
Goods such as "testers" that are put on the market without the IP right holder’s consent may be destroyed, even if they were not illegally manufactured or illegally marked.
That was the judgment of the Court of Justice of the EU in response to a question referred from Poland’s Supreme Court published on 13 October 2022 (Case C-355/21, Perfumesco.pl sp. z o.o. sp.k. v Procter & Gamble International Operations SA).
The case concerned samples of HUGO BOSS perfumes made available to sellers and authorised distributors, and marked “not for sale”, “demonstration” or “tester”.
In 2016 Procter & Gamble, which is the exclusive licensee of the HUGO BOSS trade mark for perfumes etc in class 3, brought an action against wholesaler Perfumesco.pl. P&G sought the destruction of products that had been seized and that bore the HUGO BOSS trade mark, in particular testers, which had not been placed on the market in the EEA by the trade mark owner or with its consent.
The first instance court ordered the destruction, and the Warsaw Court of Appeal upheld that decision. On further appeal, the Supreme Court asked the CJEU for guidance on the interpretation of Article 10(1) the EU Enforcement Directive.
Article 10(1) concerns “corrective measures” and states that EU member states shall ensure that judicial authorities may order “appropriate measures” including recall from the channels of commerce, definitive removal from channels of commerce or destruction.
The Court’s analysis
The Court said the question referred involved interpreting the concept of “infringing an intellectual property right”.
It said that Article 10(1) “does not limit the application of the corrective measures for which it provides to certain types of infringement of an intellectual property right”. This broad interpretation is consistent with Article 46 of the TRIPS Agreement and with the aim of ensuring effective protection for intellectual property.
Article 10 therefore “covers all goods found to be infringing intellectual property rights, irrespective of the form of infringement, without excluding a priori the application of the corrective measure of destruction, provided for in Article 10(1)(c), in the case of some of those infringements”.
The Court added that it is for the judicial authorities to determine what measures may be imposed and:
“it cannot be considered that the corrective measure in the form of the destruction of goods, referred to in Article 10(1)(c) of [the Enforcement] directive, is applicable only in the event of infringement of the right conferred by Article 9(3)(a) of Regulation No 207/2009 and that its application is excluded in the event of infringement of the rights conferred by Article 9(3)(b) or (c) of that regulation”.
The answer to the question referred was therefore that Article 10(1) must be interpreted as
“precluding the interpretation of a provision of national law according to which a protective measure in the form of the destruction of goods may not be applied to goods which have been manufactured and to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market in the European Economic Area without his or her consent.”
This clear ruling from Europe’s top court will be welcomed by the perfume industry. Products such as testers play an important role, enabling customers to sample perfumes before buying them. However, they often seem to end up on the market, despite the best efforts of trade mark owners to prevent that happening.
The decision confirms that courts can order destruction where goods bearing a trade mark are offered, put on the market, imported or exported as well as in cases where the infringing mark is affixed to the goods or their packaging. It will of course be for the relevant courts to determine the appropriate remedies in each specific case.