The trade mark case
17. There were two parts to the trade mark case. The first concerned the use by JSC of the Nomination sign in relation to genuine, individual Nomination base links. The second turned on whether there had been use of the Nomination sign in relation to JSC’s own links. Use of the sign in relation to individual Nomination links 18.The starting point was common ground. The Nomination base links bear the Nomination device and therefore a sign identical to all three Trade Marks. JSC’s marketing of individual Nomination base links constituted use of the sign in relation to goods identical with those for which the Trade Marks are registered. Section 10(1) of the Trade Marks Act 1994 (‘the 1994 Act’) is engaged unless JSC has a statutory defence. 19.Nomination’s right to restrain such use was potentially limited by section 12: “12. (1) A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent. (2) Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market).” 20. The corresponding provision in art.7 of Directive 2008/95/EC (superseded since 14 January 2019 by an almost identical art.15 of Directive (EU) 2015/2436) has different wording, but not such as to make a material difference: “7. 1. The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.” 21.I will refer to Directive 2008/95/EC and its predecessor, 89/104/EEC interchangeably as ‘the Trade Mark Directive’. The latter was relevant to some of the authorities cited and contained the same art.7 on the exhaustion of rights. 22.Nomination argued that it had not consented to the individual base links being put on the market or alternatively, if it did, there existed legitimate reasons to oppose further commercialisation of the links by JSC. Use of the sign in relation to JSC’s links 23. The second part of Nomination’s trade mark case was that JSC had used the Nomination sign in relation to JSC’s own links and had thereby infringed the Trade Marks pursuant to s.10(1) of the 1994 Act. The Particulars of Claim also alleged infringement under subsections 10(2) and (3) but counsel were agreed that these added nothing. The issue was whether there had been use of the sign in relation to JSC’s links.