Mastercigars Direct Ltd v Hunters & Frankau Ltd & Ors [2007] EWCA Civ 176 (08 March 2007)

Mastercigars Direct Ltd v Hunters & Frankau Ltd & Ors [2007] EWCA Civ 176 (08 March 2007)

The Court of Appeal held that Corporacion Habanos SA, by its conduct and arrangements with the Casas del Habano, consented unequivocally to the export and subsequent sale of small but commercial consignments of cigars in the EEA. The $25,000 purchase limit, the use of invoices designed to facilitate export, HSA's control over the process, and the lack of objection to such sales demonstrated that HSA had renounced its rights to oppose the marketing of those goods in the EEA. The test of unequivocal consent was satisfied on the facts.

Citation
[2007] EWCA Civ 176
Parties
Claimant/appellant/part 20 Defendant: Mastercigars Direct Limited; Defendant/respondent: Hunters & Frankau Limited; Part 20 Claimant/respondent: Corporacion Habanos SA; Part 20 Defendant: Christopher John du Mello Kenyon
Jurisdiction
England and Wales
Judgment Date
08 March 2007
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (chancery Division, Intellectual Property)
Outcome
Appeal allowed; declaration of non-infringement granted to Mastercigars Direct Limited.
Legal Topics
Trade Marks, Parallel Imports, Exhaustion of Rights, Consent Under Trade Mark Law, Distribution Agreements
Intellectual Property Law European Union Law Trade Marks Parallel Imports Exhaustion of Rights Consent Under Trade Mark Law Distribution Agreements

Case Brief

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Parties

Mastercigars Direct Limited

Claimant/appellant/part 20 Defendant

Hunters & Frankau Limited

Defendant/respondent

Corporacion Habanos SA

Part 20 Claimant/respondent

Christopher John du Mello Kenyon

Part 20 Defendant

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (chancery Division, Intellectual Property)

Legal Issues

  1. 1 Whether Corporacion Habanos SA (HSA) consented to the placing of the relevant consignments of cigars on the market within the EEA within the meaning of Article 7(1) of the Trade Marks Directive 89/104;
  2. 2 Whether the acts and arrangements between HSA and Cuban retail outlets (Casas del Habano) amounted to express or implied consent for EEA marketing;
  3. 3 Whether the $25,000 purchase limit and related documentation constituted unequivocal consent;

Ratio Decidendi

The Court of Appeal held that Corporacion Habanos SA, by its conduct and arrangements with the Casas del Habano, consented unequivocally to the export and subsequent sale of small but commercial consignments of cigars in the EEA. The $25,000 purchase limit, the use of invoices designed to facilitate export, HSA's control over the process, and the lack of objection to such sales demonstrated that HSA had renounced its rights to oppose the marketing of those goods in the EEA. The test of unequivocal consent was satisfied on the facts.

Court Disposition

Appeal allowed; declaration of non-infringement granted to Mastercigars Direct Limited.

Orders

  • Declaration that Mastercigars Direct Limited did not infringe the trade marks by importing the relevant consignments into the UK.
  • No order for financial relief or delivery up against Mastercigars Direct Limited.