Removal of barcode does not infringe trademark

In Ape & Partners SPA v Streetman ApS (Case A-9-13, January 20 2014), the Maritime and Commercial Court has refused to grant an interim injunction preventing the defendant from marketing and selling products after the tags attached to them had been altered.

Ape & Partners SPA and Balling Brands ApS requested an interim injunction against Streetman, claiming that the latter was prohibited from marketing and selling products under the trademarks PARAJUMPERS and PJS THAT OTHERS MAY LIVE PARAJUMPERS after it had altered the tags attached to the products.

PJS is the owner of a number of EU trademark registrations, including the two trademarks mentioned above, which have been licensed to Ape and Balling. Streetman sells jackets under both trademarks.

The original Parajumpers jackets are sold with five tags on a string, of which one is a barcode label. On the jackets sold by Streetman, the tag with the barcode label had been removed and a white sticker had been placed on one side of one of the other tags, covering a PARAJUMPERS trademark.

Ape and Balling claimed that, by removing the original tag with the original barcode and applying a white sticky label on one of the four remaining tags, thereby covering the trademark, Streetman had made an inadmissible change of, or deterioration in, the condition of the goods. The parties argued that such a change of image and reputation of the trademark was a reasonable reason to oppose the use of the trademark, as defined in Article 13(2) of the Community Trademark Regulation (207/2009).

The Maritime and Commercial Court found that the jackets were original and not counterfeit, and that they had been brought for trade within the European Union with the consent of the trademark owner. The court further found that placing the white sticky label on one of the tags did not in itself imply such a deterioration of the reputation of the goods or such an infringement of the trademark owner's rights that it could lead to an interim injunction.

With regard to the barcode, the court remarked that it may be used to identify Parajumpers products that have been brought for trade, thus making it possible to recall defective goods. Furthermore, the barcode may be used as a way of testing whether the products in the market are original or counterfeit. However, the barcode may also be used to identify the distributor that sold the parallel-imported jackets, thus giving Ape an opportunity to cease delivery to the distributor in question (ie, Streetman) and obstruct its continued import and sale of the jackets.

On evaluation, the court found that Ape and Balling had not provided reasonable reasons to prohibit Streetman from marketing and selling the goods without the original barcode and with the sticker affixed. Consequently, the court declined to grant the interim injunction and ordered the plaintiffs to pay Dkr25,000 as costs.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen