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UDV v Brandtraders -- the case that nearly got away

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat has just received an innocent question from his friend Kristof Neefs (Altius): did the normally-vigilant Kat miss Case C-62/08 UDV North America v Brandtraders NV, an Order of the Court of Justice of the European Communities of 19 February. "I assume much to your dismay", says Kristof, "that you missed it because it's not available in English". Suffering an unaccustomed attack of honesty, the IPKat has to say that the reason he missed it was because he, er, forgot that it was coming up. If Kats are capable of blushing, this Kat is.

The judgment was prompted by a request for a preliminary reference from the Hof van Cassatie van België, which sought guidance on the following questions:

"(1) For there to be use of the sign within the meaning of Article 9(1)(a) and (2)(d) of Council Regulation 40/94 of 20 December 1993 on the Community trade mark, is it necessary that a third party, within the meaning of Article 9(1)(a) of the Regulation:
(a) uses the sign on his own behalf?
(b) uses the sign as an interested party in relation to trade in goods in which he is himself a contractual party?
(2) Can a trade intermediary who acts in his own name, but not on his own behalf, be regarded as a third party who uses the sign within the meaning of Article 9(1)(a) and (2)(d)?"

Kristof informs the IPKat that the court, in a free translation into English, said as follows:

"The concept of use in the sense of Article 9(1)(a), and 9(2)(d) ... applies to a situation, such as that of the main dispute at issue, where an intermediary, acting in his own name but on the account of the seller and therefore having no interest in the sale of goods to which he is a contracting party, uses a sign identical to a Community trade mark on business papers for the same goods or services as those covered by the mark".

The intermediary in question, Kristof explains, apparently exploited a website where traders could anonymously advertise and negotiate the sale of goods. Once a sale had been agreed upon, the website owner, like a commission agent, would draw up a sales agreement with the buyer for a commission fee.

No rocket science here, says the IPKat, which probably explains why it was felt acceptable to dispense with an Advocate General's Opinion and an English translation.

Full post as published by IPKat on March 19, 2009 (boomark / email).