The Intellectual Property Enterprise Court recently held in Nomination v Brealey that a trade mark owner, who was making and selling bracelets that could be disassembled and re-assembled, could object to the onward sale of individual bracelet links because it was likely that the re-seller’s packaging would damage its reputation.
The decision highlights the importance for trade mark owners to devise a clear strategy in respect of the sale and distribution of their goods, in particular when those goods can be split. Trade mark owners should communicate that strategy clearly to their authorised retailers and conduct regular controls.
Key legal points
The case is interesting because it examines the issue of whether the sale of a whole product exhausts the trade mark proprietor’s right to control the sale of individual parts of the product.
The issue of dividable products is not new and was considered by the European Court of Justice in UsedSoft v Oracle, a case concerned with copyright exhaustion relating to multi-user software licences.
The case also highlights the importance that packaging has in upholding the image of a mark, in line with the judgment of the European Court of Justice in L’Oreal v eBay.