This was a reference to the ECJ under art 234 EEC from the Hague regional court of appeal. The proceedings arose in an appeal by the importer of a consignment of “Aquafresh” toothpaste from South Africa from the refusal of the lower court to award damages for the impounding of those goods by the Dutch customs authorities in March and April 2002 upon the request of SmithKline, the proprietor of the “Aquafresh” trade mark.
The appeal court referred several questions to the ECJ which the Court re-formulated as follows:
(1) Can a trade mark proprietor may prevent the introduction into the EC, under the external transit procedure or the customs warehousing procedure, of original goods bearing his registered mark?
(2) Can the trade mark proprietor may prohibit the offering for sale or the sale of original products placed under the external transit procedure or the customs warehousing procedure? and
(3) Where does the onus of proof lie?
The ECJ answered those questions as follows:
(1) Art 5 (1) and (3)(c) of the Trade Marks Directive must be interpreted as meaning that a trade mark proprietor cannot oppose the mere entry into the EC, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the EC previously by that proprietor or with his consent. Nor can the proprietor make the placing of the goods at issue under the external transit procedure or the customs warehousing procedure conditional on the existence, at the time of the introduction of those goods into the EC, of a final destination already specified in a third country, possibly pursuant to a sale agreement.
(2) “Offering” and “putting on the market” goods, within the meaning of art 5 (3) (b) of the and art 9(2) (b) of the CTM Regulation No 40/94, may include, respectively, the offering and sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done, and/or the sale is effected, while the goods are placed under the external transit procedure or the customs warehousing procedure. The proprietor may oppose the offering or the sale of such goods when it necessarily entails the putting of those goods on the market in the EC.
(3) In a situation such as the one at issue in the main proceedings, it is for the trade mark proprietor to prove the facts which would give grounds for exercising the right of prohibition provided for in art 5(3) (b) and (c) of the Directive and article 9 (2) (b) and (c) of the Regulation by proving either release for free circulation of the non-Community goods bearing his mark or an offering or sale of the goods which necessarily entails their being put on the market in the EC.