Article 5 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Article 9 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that the proprietor of a mark is entitled to oppose a third party, without its consent, removing all the signs identical to that mark and affixing other signs on goods placed in the customs warehouse, as in the main proceedings, with a view to importing them into or trading them in the European Economic Area (EEA) where they have never yet been marketed.

Nevertheless, it must be observed, first, that the removal of signs identical to the mark prevents the goods for which that mark is registered from bearing that mark the first time that they are placed on the market in the EEA and, hence, deprives the proprietor of that trade mark of the benefit of the essential right, which is conferred on him by the case-law recalled in paragraph 31 of this judgment, to control the initial marketing in the EEA of goods bearing that mark.

Secondly, the removal of the signs identical to the mark and the affixing of new signs on the goods with a view to their first placing on the market in the EEA adversely affects the functions of the mark.

Thirdly, by infringing the trade mark proprietor’s right to control the first placing of goods bearing that mark on the market in the EEA and by adversely affecting the functions of the mark, the removal of the signs identical to the mark and the affixing of new signs on the goods by a third party, without the consent of the proprietor, with a view to importing those goods into or placing them on the market in the EEA and with the aim of circumventing the proprietor’s right to prohibit the importation of those goods bearing its mark, is contrary to the objective of ensuring undistorted competition.

Finally, having regard to the case-law recalled in paragraph 38 of this judgment concerning the concept of ‘use in the course of trade’, it must be held that an operation consisting, on the part of the third party, of removing signs identical to the mark in order to affix its own signs, involves active conduct on the part of that third party, which, since it is done with a view to importing those goods into the EEA and marketing them there and is therefore carried out in the exercise of a commercial activity for economic advantage, within the meaning of the case-law recalled in paragraph 39 of this judgment, may be regarded as a use in the course of trade.

In that context, it must also be observed that Article 9(4) of Regulation No 207/2009, as amended by Regulation No 2015/2424, which applies to the facts in the main proceedings with effect from 23 March 2016, entitles the proprietor from that date to prevent all third parties from bringing goods, in the course of trade, into the European Union without being released for free circulation there, where those goods, including packaging, come from third countries and bear without authorisation a mark which is identical to the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that mark. That entitlement of the trade mark proprietor lapses only if, during the proceedings to determine whether the registered mark has been infringed, evidence is provided by the declarant or the holder of the goods that the proprietor of the registered mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

(see paras 42, 43, 47, 48, 51, 52, operative part)