Removing trade marks? Don’t you Du(ma) it!

It is a well known fact that you will infringe the Coca-Cola trade mark if you use it to sell your own cola, but does the removal of someone’s trade mark (even before the product is imported in the EU) constitute an infringement?  The Court of Justice of the EU answered this question recently.
 
Duma, a Belgian company specialised in the sales of amongst others forklifts, purchased Mitsubishi forklifts from outside the EU. However, before importing and reselling the forklifts, Duma removed all Mitsubishi trade marks in a customs warehouse and replaced them with their own trade marks. Then, the forklifts with Duma trade marks were introduced to the European market. Mitsubishi was of the opinion that this practice of Duma infringed its trade marks and started legal proceedings. Duma defended its actions by stating that they didn’t use the Mitsubishi trade mark in the EU, they merely removed it, in their opinion, this did not constitute trade mark infringement.
 
Eventually, the Court of Justice of the EU had to decide whether this approach of Duma constituted an infringement of the trade marks of Mitsubishi. The Court judged that Duma, through this practice, deprived the trade mark owner of its right to control the first trade of its branded products in the European Economic Area. The removal of someone’s trade mark therefore, in the opinion of the Court, constitutes the use of that trade mark, which eventually results in an infringement.

Moïra Truijens & Mathijs Peijnenburg