Trade mark infringement: sale of counterfeit or parallel import products without consent

A claim for infringement of "MIFARE" trade marks by sale of counterfeit or parallel import products without the trade mark owner's consent was upheld by IPEC on 31 July 2019.

Facts

The claimant, a producer of RFID smart cards bearing the word MIFARE, brought an action against the defendant, a supplier of RFID products, for infringement of various "MIFARE" figurative and word marks registered for smart cards. The case concerned the defendant's sale of "MIFARE" branded cards on two separate occasions:

• The defendant purchased the cards from a registered partner of the claimant. Due to an in-house technical analysis of the silicone used to produce the cards, the claimant managed to show that the cards were in fact counterfeit.
• The defendant obtained the cards from a company which was not a registered partner of the claimant, which in turn acquired them from another company based in Taiwan. The claimant failed to show that the cards were counterfeit because the results of the same technical analysis and two other items of evidence were inconclusive.

IPEC decision

The IPEC judge decided that the defendant infringed the claimant's trade marks on both occasions through the sale of counterfeit cards in the first instance and the parallel import of goods in the second.

Relying on Case C-414/99 Zino Davidoff v A&G Imports [2001] ECR I-8691 and Mastercigars Direct v Hunters & Frankau [2007] EWCA Civ 176, [2007] RPC 24, the judge reiterated that the unequivocal consent required from the trade mark owner "does not refer to the standard of proof, but to the nature of the act – ie a proved act which is merely consistent with consent and also consistent with its absence is not enough".

Concerning the first occasion, the judge was of the view that a document sent by the claimant to the defendant, which outlined the value of using genuine MIFARE cards and contained a warning against the use of unauthorised products, with a recommendation to check authenticity of the cards did not amount to unequivocal consent.

In relation to the second occasion, a document obtained by the defendant from the Taiwanese company asserting that they were an authorised distributor of the claimant did not convince the judge that it represented unequivocal consent because nothing in the document did in fact suggest that the company was authorised to distribute the claimant's products in the EEA.

Accordingly, the judge found that the claimant had not unequivocally consented to the MIFARE cards being sold on either of the occasions, and as a result, the defendant was held to have infringed the claimant's trade marks.

Case ref: NXP BV v ID Management Systems [2019] EWHC 1902 (IPEC)

Alex Walesa