Mastercigars Direct Ltd v Hunters & Frankau Ltd & Ors

Mastercigars Direct Ltd v Hunters & Frankau Ltd & Ors

HSA, by its conduct, including setting high purchase limits for foreigners, providing export-facilitating documentation (facturas), exercising de facto control over retail outlets, and failing to object to routine commercial orders from abroad, unequivocally consented to the export and resale of small commercial quantities of cigars in the EEA, thereby exhausting its trade mark rights and precluding infringement claims against the consignments at issue.

Parties
Appellant/part 20 Defendant: Mastercigars Direct Limited; Respondent/defendant: Hunters & Frankau Limited; Respondent/part 20 Claimant: Corporacion Habanos SA; Part 20 Defendant: Christopher John du Mello Kenyon
Jurisdiction
England and Wales
Judgment Date
08 March 2007
Procedural Posture
Civil Appeal / Appeal From High Court (chancery Division, Intellectual Property)
Outcome
Appeal allowed; no trade mark infringement found for the consignments at issue.
Legal Topics
Trade Marks, Parallel Imports, Exhaustion of Rights, Consent Under Trade Mark Law
Intellectual Property Law European Union Law Trade Marks Parallel Imports Exhaustion of Rights Consent Under Trade Mark Law

Case Brief

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Parties

Mastercigars Direct Limited

Appellant/part 20 Defendant

Hunters & Frankau Limited

Respondent/defendant

Corporacion Habanos SA

Respondent/part 20 Claimant

Christopher John du Mello Kenyon

Part 20 Defendant

Procedural Posture

Civil Appeal / Appeal From High Court (chancery Division, Intellectual Property)

Legal Issues

  1. 1 Whether Corporacion Habanos SA (HSA) consented to the placing of cigars on the EEA market within the meaning of Article 5.1 and 7.1 of the Trade Marks Directive 89/104, so as to exhaust its trade mark rights and preclude infringement claims against parallel imports by Mastercigars Direct Limited.

Ratio Decidendi

HSA, by its conduct, including setting high purchase limits for foreigners, providing export-facilitating documentation (facturas), exercising de facto control over retail outlets, and failing to object to routine commercial orders from abroad, unequivocally consented to the export and resale of small commercial quantities of cigars in the EEA, thereby exhausting its trade mark rights and precluding infringement claims against the consignments at issue.

Court Disposition

Appeal allowed; no trade mark infringement found for the consignments at issue.

Orders

  • Appeal allowed; no injunction or financial relief granted against Mastercigars Direct Limited for the consignments in question.