Parallel Importer Non Playing Fair Amongst Playstation Imports

This slipped on to the BAILII website when the IPKat was difficult at function on other exciting developments. It's the determination of Mr Justice Lawrence Collins inwards the Chancery Division dispute of Kabushiki Kaisha Sony Computer Entertainment too unopen to other v Nuplayer Ltd [2005] EWHC 1522 (Ch), inwards which judgment was delivered concluding Thursday.

In Dec 2004 Sony launched inwards Nippon a novel hand-held, multi-media PSP console which allowed the user to play games, sentry films, store photographs too heed to music. Sony planned to launch the console inwards the UK of Britain too Northern Republic of Ireland inwards 2005 but, inwards March 2005, it institute that parallel imported PSP consoles were beingness offered for sale inwards the UK of Britain too Northern Republic of Ireland via Nuplayer's website. Sony complained that, past times offering the consoles for sale inwards the UK, Nuplayer infringed a publish of their European too UK of Britain too Northern Republic of Ireland merchandise marks (including the give-and-take grade PlayStation too the PS logo). Nuplayer said it had non relied upon the registered marks inwards the class of merchandise inwards the relevant goods too that it was prepared to obliterate all instances of the marks on the goods or packaging of the PSP consoles which it intended to proceed to import, too hence that they would no longer live on used equally a guarantee of the rootage of those consoles. Sony sued for merchandise grade infringement, tilt that Nuplayer was "using" its marks nether department 10(4)(b) too (c) of the Trade Marks Act 1994 ((b) offering or exposing goods for sale, putting them on the marketplace position or stocking them for those purposes nether the sign, or offering or supplying services nether the sign; (c) importing or exporting goods nether the sign"), seeking summary judgment. Nuplayer denied infringing: it said that (i) it did non "use" Sony's marks inwards the context of sales to consumers prior to the entire transaction beingness concluded too that (ii) in that location would inwards whatever trial live on no futurity infringement equally a final result of the obliteration of the marks, both from its website too from the products imported. In these proceedings Lawrence Collins J had to consider whether a merchandise grade possessor could foreclose mesh sales inwards the UK of Britain too Northern Republic of Ireland of parallel imports which were kickoff marketed exterior the European Economic Area.

The approximate held for Sony. His conclusions were equally follows:

* The fact that Nuplayer, inwards selling the consoles on the internet, did non display them for inspection but exactly described them equally ‘PSP consoles’ did non hateful that it did non usage Sony's marks, since department 10(4) of the Act specifically included "stocking" products nether the grade equally an infringement;

* It was clear that Nuplayer was using the marks inwards relation to the goods. Its offering to obliterate the marks did non brand whatever difference: although the courtroom had ability nether the Act to fellowship an infringer to erase, take away or obliterate a sign from whatever infringing goods, that was exactly 1 of the possible remedies too could non institute an declaration that products which would otherwise accept been infringing ceased to live on too hence when the marks were erased or obliterated.

* Since the accused had no arguable defence, summary judgment would live on ordered.

notes that, fifty-fifty if this were NOT an appropriate illustration for summary judgment, the learned approximate would accept ordered interim relief pending the trial. He likewise rejected the declaration that Nuplayer's usage of Sony's marks could e'er live on regarded equally a descriptive usage falling inside the reach of a permitted usage inwards damage of the ECJ's leading ruling inwards Case C-200 Hölterhoff [2002] ECR I-4187.

Nuplayer website here
Oldplayer website here