Setting aside the preliminary question regarding the independence of judges, which was raised by the judges ruling at the national level in response to a request from the National Council of the Judiciary, the case concerned a company whose business included, among other things, the wholesale sale of perfumes. Interestingly, the company’s sales offer also included various types of perfume samples, which, in addition to the trademark of a given brand, were also marked by the manufacturer as “not for sale” or “tester,” meaning that these products were not intended for sale.
This behavior did not please one of the perfume companies, which held the protective rights to the Community trademark used to mark some of the samples offered by the Polish company. In light of the situation, a lawsuit was filed with the court, including a request that the Polish company destroy all of the testers it possessed that were marked with the disputed trademark. The justification stated that the company had not authorized the introduction of the disputed products, which were marked with its trademark, into circulation. The basis for the request was Article 286 of the Act on Industrial Property Rights.
The court of first instance agreed with the plaintiff’s arguments and ruled in accordance with the corporation’s request. Despite the appeal, the court of second instance also upheld the ruling issued in this case. Interestingly, the Polish company did not give up and filed a cassation appeal to the Supreme Court. The Supreme Court, in turn, appealed to the Court of Justice of the European Union with a question regarding the interpretation of the provisions of Directive 2004/48/WE on the enforcement of intellectual property rights. The question primarily concerned whether a national court could order the destruction of products that had actually n placed on the market without prior consent from the entity entitled to the trademark, while the marking of the products with such a trademark did not have any characteristics of illegality, as it was done directly by the perfume manufacturer. In examining the case, the Court noted that the holder of the right to a trademark has broad rights, including the right to prohibit the marking of products by other entities with its trademark, as well as the right to prohibit the sale of such products. In response to the question from the Supreme Court, the provisions of Directive 2004/48/WE do not relate exclusively to the possibility of ordering the destruction of products that have n illegally marked with a third party’s trademark. Therefore, in its judgment of October 13, 2022 (case no. C-355/21), the CJEU ruled that national courts may issue the above-mentioned order for the destruction of goods in the context of products that have n properly marked with a trademark by the entitled party, and which have nevertheless n placed on sale despite the manufacturer’s explicit prohibition.
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