Judgment;Summary — ECLI:EU:C:2020:341
Date: 2020-04-30
Language of the case: Finnish
Court formation: Tenth Chamber
Subject matter: Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Finland

Translation C-772/18 — 1 
Case C-772/18 
Request for a preliminary ruling 
Date lodged: 
3 December 2018 
Referring court: 
Korkein oikeus (Finland) 
Date of the decision to refer:  
28 November 2018 
Appellant: 
Yhtiö A 
Respondent: 
B 
  
KORKEIN OIKEUS (SUPREME COURT)   ORDER 
[…] 
Date of issue […] 
28 November 2018 […] 
APPELLANT Yhtiö A (Company A) 
RESPONDENT B 
MATTER  Trade mark dispute 
DECISION OF THE KORKEIN OIKEUS 
Subject matter of the case 
1 At issue is the interpretation of Article 5(1)(a) and (b) and (3)(b) and (c) of 
Directive 2008/95/EC of the European Parliament and of the Council to 
approximate the laws of the Member States relating to trade marks (Codified 
EN 
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version) (‘the Trade Marks Directive’) in a case concerning infringement of a 
trade mark involving the import of supposed counterfeit goods by a private 
individual for onward transmission to a third country. 
2 It is open to interpretation whether the amount of the advantage received from an 
alleged trade mark infringement by a private individual is significant in assessing 
whether his conduct is a case of the use of a trade mark in the course of trade 
within the meaning of Article 5(1) of the Trade Marks Directive. It is also 
uncertain whether a private individual can infringe the trade mark proprietor’s 
exclusive right to a trade mark if the person does not use the mark in the course of 
his own trade but as part of another person’s trade. The question also arises of 
how the condition of use of the trade mark in relation to goods or services is to be 
interpreted where a private individual imports counterfeit goods as described 
above. It is also uncertain whether, for the definition of importation within the 
scope of the trade mark proprietor’s exclusive right, [Or. 2] it is relevant that the 
goods are imported in order to be transmitted onward to a country outside the 
European Union. 
3 It is also open to interpretation whether the condition of use of a trade mark for 
goods or services is satisfied where a private individual retains goods after import 
for the purpose of their transmission out of the country by another person. 
Facts relevant to the case 
The present case 
4 Company A (’the company’) holds international trade mark No 709735 INA in 
force in Finland inter alia for the following goods: bearings. 
5 On 4 April 2011 B received a consignment of 150 bearings arriving in Finland 
from China and collected the goods from the Finnair depot on 12 April 2011. The 
bearings were later collected from B’s house and sent to Russia to be used in the 
course of trade. The bearings had not been in B’s possession for longer than some 
weeks. B received as remuneration for his activity a carton of cigarettes and a 
bottle of brandy. 
6 The prosecutor, in his application for a penal order in the proceedings brought by 
him in the Helsingin käräjäoikeus (District Court, Helsinki) on 1 October 2013, 
sought for B to be penalised for an industrial property offence, on the ground that 
for the period from 4 to 12 April 2011 B had infringed the company’s exclusive 
right to a trade mark by importing from China and dispatching on to Russia a total 
of 150 items of bearings which had been found to be counterfeit goods. The 
company, which joined in the prosecutor’s application, submitted a civil claim for 
compensation and damages for the breach. The company also sought for B to be 
prohibited from continuing or repeating [Or. 3] import of the counterfeit bearings. 
B disputed the accusation and the company’s claims. 
YHTIÖ A 
 
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The judgment of the Helsingin käräjäoikeus of 22 May 2015 
7 The Käräjäoikeus dismissed the charge. B could not be considered to have known 
or regarded it as highly probable, when the goods arrived on 4 May 2011, that 
these were counterfeit goods, and B could not be regarded as having committed an 
intentional industrial property offence. Since the bearings in question had, 
however, been shown to be counterfeit, their import had infringed the company’s 
right to a trade mark, and the Käräjäoikeus ordered B not to continue or repeat his 
actions. The Käräjäoikeus further ordered B to pay the company compensation 
and damages. It adjusted B’s liability in damages to one-third of what was 
demanded, on the basis of the slight nature of the negligence, the difference in 
circumstances of him and the company, and his other liability to pay. 
The judgment of the Helsingin hovioikeus of 23 March 2016 
8 The judgment of the Käräjäoikeus has become final in so far as the charge was 
dismissed. After B and the company appealed against the decision of the 
Käräjäoikeus to the Helsingin hovioikeus (Court of Appeal, Helsinki) in so far as 
it concerned compensation and damages, the Hovikoikeus discharged B from the 
obligation to pay the company compensation and damages. It considered that B’s 
actions could be compared to a certain extent to storage and forwarding activities, 
since B had received the goods and stored them temporarily without the purpose 
of exploiting them economically in the course of his own trade. It further 
considered that the remuneration received by B had not been founded on 
economic use of the goods in a commercial transaction but on the fact that B had 
stored the goods for another person. For those reasons the Hovioikeus considered, 
referring to the judgment of the Court of Justice of 16 July 2015, TOP [Or. 4] 
Logistics and Others, C-379/14, EU:C:2015:497, that B had not used in the course 
of trade a sign that was identical with a registered Community trade mark. There 
had therefore been no foundation for the claim for compensation and damages. 
The appeal to the Korkein oikeus 
9 The company appealed against the judgment of the Hovioikeus. The Korkein 
oikeus gave the company leave to appeal. On the company’s appeal, the primary 
issue before the Korkein oikeus is whether B by his actions infringed the 
company’s exclusive right to the trade mark. 
Provisions applicable 
EU law 
10 Under Article 5(1) of the Trade Marks Directive, the registered trade mark confers 
on the proprietor exclusive rights therein. The proprietor is entitled under 
Article 5(1)(a) to prevent all third parties not having his consent from using in the 
course of trade any sign which is identical with the trade mark in relation to goods 
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or services which are identical with those for which the trade mark is registered. 
The same right of prevention applies under Article 5(1)(b) to any sign where, 
because of its identity with, or similarity to, the trade mark and the identity or 
similarity of the goods or services covered by the trade mark and the sign, there 
exists a likelihood of confusion on the part of the public; the likelihood of 
confusion includes the likelihood of association between the sign and the trade 
mark. 
11 Under Article 5(3)(b) of the Trade Marks Directive, acts prohibited in accordance 
with Article 5(1) are, inter alia, offering the goods, or putting them on the market 
or stocking them for these purposes under that sign, or offering or supplying 
services thereunder. The same right of prevention [Or. 5] applies under 
Article 5(3)(c) to importing or exporting the goods under the sign. 
12 According to the Court of Justice, the proprietor of a registered trade mark can 
prevent, under Article 5(1)(a) and (b) of Directive 89/104/EEC, corresponding to 
the Trade Marks Directive and repealed by the Trade Marks Directive, a third 
party from using a sign which is identical with or similar to his trade mark only if 
the following four conditions are satisfied: that use must be in the course of trade; 
it must be without the consent of the proprietor of the trade mark; it must be in 
respect of goods or services which are identical with or similar to those for which 
the trade mark is registered; and it must affect or be liable to affect the essential 
function of the trade mark, which is to guarantee to consumers the origin of the 
goods or services (judgment of 11 September 2007, Céline, C-17/06, 
EU:C:2007:497, paragraph 16; order of 19 February 2009, UDV North America, 
C-62/08, EU:C:2009:111, paragraph 42; judgment of 12 June 2008, O2 Holdings 
and O2 (UK), C-533/06, EU:C:2008:339, paragraph 57). 
National provisions 
13 In accordance with Paragraph 4(1) of the Tavaramerkkilaki (Law on trade marks) 
(56/2000) in force at the time of the alleged infringement, the content of the right 
to a distinctive trade mark is that no one other than the proprietor of the trade 
mark may in the course of trade use a sign that may be confused with it on goods 
or their packaging, in advertising or in business documents or otherwise, including 
also verbal use. That applies regardless of whether the goods are put or intended 
to be put on the market in this country or abroad or imported into Finnish territory 
for use, retention or storage in the course of trade or for onward forwarding to a 
third country. [Or. 6] 
14 The Law on trade marks was amended by the Law (616/2016) which entered into 
force on 1 September 2016. The aim of the amendment to the law was to lay down 
provisions concerning inter alia registration and protection to comply with the 
Trade Marks Directive. Civil claims for compensation based on the alleged 
infringement of a company’s trade mark are assessed on the basis of the law that 
was in force at the time of the alleged infringement. The Law on trade marks 
YHTIÖ A 
 
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(56/2000) in force at that time must be interpreted and applied having regard to 
the Trade Marks Directive and the relevant case-law of the Court of Justice. 
Need for a preliminary ruling 
15 Before the Korkein oikeus is a case concerning infringement of a trade mark, in 
which the giving of a reasoned judgment requires an interpretation of Article 5 of 
the Trade Marks Directive. There are no special provisions in EU law on whether 
Article 5 of the Trade Marks Directive requires that a person uses a sign in the 
course of his own trade. Nor has the Court of Justice given any decisions 
clarifying the point. 
Background to Questions 1 and 2 
16 According to settled case-law of the Court of Justice, a sign is used in the course 
of trade if it is used with a view to economic advantage in the context of 
commercial activity and not as a private matter (judgment of 12 November 2002, 
Arsenal Football Club, C-206/01, EU:C:2002:651, paragraph 40; judgment in 
Céline, cited above, paragraph 17; judgment of 23 March 2010, Google France 
and Google, C-236/08 to C-238/08, EU:C:2010:159, paragraph 50; order in UDV 
North America, cited above, paragraph 44). 
17 It is not clear on the basis of the case-law to date of the Court of Justice whether 
the amount of the benefit obtained by a private individual from an infringement of 
a trade mark is relevant when assessing whether his conduct is the use of a trade 
mark in the course of trade within the meaning of Article 5(1) of the Trade Marks 
Directive [Or. 7] or a private matter. The private individual who is the defendant 
in the present case received as remuneration for his conduct a carton of cigarettes 
and a bottle of brandy. 
18 It is also unclear whether Article 5 of the Trade Marks Directive requires that a 
person uses a trade mark in the course of his own trade, or whether it also falls 
within the scope of Article 5(1)(a) or (b) of the Trade Marks Directive if a person 
uses a trade mark as part of another person’s trade. For example, the conduct of an 
operator such as the company Brandtraders, the defendant in the UDV North 
America case in the Court of Justice, which acted in its own name but on behalf of 
the seller and was not therefore a party to the contract for the purchase of the 
goods, had clearly taken place with a view to obtaining an economic advantage, in 
the course of Brandtraders’ own trade, and there was therefore no need to address 
the question of acting merely as a part of another person’s trade (judgment in 
UDV North America, cited above, paragraphs 36 and 45). 
19 The Korkein oikeus considers that the expression ‘in the course of trade’ in 
Paragraph 4(1) of the Finnish Law on trade marks (56/2000) does not refer only to 
acts in the course of one’s own trade. The expression ‘in the course of his trade’ 
used in Paragraph 6(1) of the Law on trade marks (616/2016) which replaced the 
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last mentioned paragraph, on the other hand, refers to acts in the course of one’s 
own trade. 
Background to Question 3 
20 Use ‘in relation to goods or services’ within the meaning of Article 5(1) of 
Directive 89/104/EEC, according to the Court of Justice, concerns a third party 
affixing a sign corresponding to the trade mark to goods which he sells, offers, 
imports or exports, puts on the market or stocks for such a purpose [Or. 8] within 
the meaning of Article 5(3)(a) and (b) of the directive (judgment in Céline, cited 
above, paragraph 22; judgment in Arsenal Football Club, cited above, 
paragraph 41; judgment of 25 January 2007, Adam Opel, C-48/05, EU:C:2007:55, 
paragraph 20; judgment in Google France and Google, cited above, 
paragraph 61). 
21 According to the Court of Justice, the expression ‘in relation to goods and 
services’ does not relate solely to the goods or services of a third party who uses 
signs corresponding to the trade mark, but may also relate to the goods or services 
of another person on whose behalf the third party is acting. The fact that an 
economic operator uses a sign corresponding to a trade mark in relation to goods 
which are not his, in the sense that he does not have title to them, does not in itself 
prevent that use from falling within the scope of Article 5 of Directive 
89/104/EEC and Article 9 of Regulation (EC) No 40/94 (order in UDV North 
America, cited above, paragraph 43; judgment in Google France and Google, 
cited above, paragraph 60; judgment of 12 July 2011, L’Oréal and Others, 
C-324/09, EU:C:2011:474, paragraphs 91 and 92). 
22 In the TOP Logistics and Others judgment of the Court of Justice, the company 
TOP Logistics was an undertaking carrying on the storage and transshipment of 
goods which had a licence to operate a customs warehouse and a tax warehouse. 
In that judgment it was stated that the fact that a warehousekeeper offers a storage 
service for goods bearing a trade mark belonging to another person is not the use 
of a sign identical with that trade mark for the same goods or services as those for 
which the trade mark in question is registered. Since that service provider enables 
such use by its customer, its actions cannot be assessed under Directive 
89/104/EEC but must be examined, if necessary, from the point of view of other 
rules of law (judgment in TOP Logistics and Others, cited above, paragraphs 15 
and 45). 
23 As regards the requirement of use in relation to goods or services within the 
meaning of Article 5(1) and (3)(b) of the Trade Marks Directive, it is not [Or. 9] 
clear how that requirement is assessed where a person who has imported goods on 
behalf of another person and retained and stored them does not carry on a 
warehousing service as in the TOP Logistics and Others case, but in return for 
remuneration in the form of a carton of cigarettes and a bottle of brandy receives 
goods sent from a country outside the European Union to a Member State and 
YHTIÖ A 
 
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released into free circulation there, and dispatches the goods from his address for 
shipping to a country outside the European Union and reselling them there. 
Background to Question 4 
24 According to the Court of Justice, importing within the meaning of Article 5(3)(c) 
of Directive 89/104/EEC, which the proprietor of a trade mark can oppose on the 
basis that it is the use of a trade mark in the course of trade within the meaning of 
Article 5(1), requires the introduction of the goods into the Community with the 
purpose of putting them on the market there. The putting on the market in the 
Community of goods coming from a third country is subject to their release for 
free circulation within the meaning of Article 24 EC (judgment of 18 October 
2005, Class International, C-405/03, EU:C:2005:616, paragraphs 34 and 35). 
25 In accordance with Article 29 of the Treaty on the Functioning of the European 
Union (consolidated version), which corresponds to the previous Article 24 EC, 
products coming from a third country are considered to be in free circulation in a 
Member State if the import formalities have been complied with and any customs 
duties or charges having equivalent effect which are payable have been levied in 
that Member State, and if they have not benefited from a total or partial drawback 
of such duties or charges.. 
26 As regards the definition of importing, it is not clear whether it is to be regarded 
as importation where a person provides his address to a reseller of goods marked 
with a trade mark and receives at his address [Or. 10] the goods that have been 
sent, without their having been sent at his request and without any other active 
influence of that person on the sending of the goods into the country. In the TOP 
Logistics and Others judgment of the Court of Justice, for example, Van Caem, a 
company carrying on international trading, had had the goods in question 
imported into EU territory and stored in a tax warehouse. The importing and 
storing had taken place at the request of Van Caem. The Court of Justice found 
that Van Caem had used the trade mark in the course of trade (judgment in TOP 
Logistics and Others, cited above, paragraphs 16, 18 and 44). 
Questions referred for a preliminary ruling 
[…] 
1. Is the amount of the advantage received from an alleged infringement of 
a trade mark by a private individual relevant when assessing whether his 
conduct is the use of a trade mark in the course of trade within the meaning 
of Article 5(1) of the Trade Marks Directive or a private matter? If a private 
individual uses a trade mark, does use in the course of trade require the 
satisfaction of criteria other than the requirement of economic advantage 
obtained from the transaction in question concerning the trade mark? 
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2. If the economic advantage must have a certain degree of substantiality, 
and a person, on the basis of the triviality of the economic advantage received 
by him and the non-fulfilment of other possible criteria of use in the course of 
trade, may not be regarded as having used a trade mark in the course of his 
own trade, is the condition of use in the course of trade within the meaning of 
Article 5(1) of the Trade Marks Directive satisfied if a private individual uses 
a trade mark on behalf of another person as part of that other person’s trade, 
where he is not, however, an employee in the service of that other person? 
3. Does a person keeping goods use a trade mark in relation to goods 
within the meaning of Article 5(1) and (3)(b) of the Trade Marks Directive if 
the goods marked with the trade mark, sent to a Member State and released 
into free circulation there, are received on behalf of a reselling company and 
stored by a person, into whose possession the goods have passed, who does 
not carry on the importation and storage of goods and who does not have a 
licence to operate a customs warehouse or tax warehouse? 
4. May a person be regarded as importing goods marked with a trade 
mark within the meaning of Article 5(3)(c) of the Trade Marks Directive if 
the goods were not imported at the person’s request, but the person provided 
his address to a reseller and received on behalf of the reseller the goods 
released into free circulation in the Member State, kept them in his 
possession for some weeks, and released them for transmission to a third 
country outside the European Union for the purpose of resale there? 
[Or. 12] […]