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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> KK Sony Computer Entertainment & Anor v Pacific Game Technology (Holding) Ltd [2006] EWHC 2509 (Pat) (18 October 2006) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2006/2509.html Cite as: [2006] EWHC 2509 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Strand, London, WC2A 2LL |
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B e f o r e :
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(1) KK SONY COMPUTER ENTERTAINMENT (2) SONY COMPUTER ENTERTAINMENT EUROPE LIMITED |
Claimants |
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- and - |
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PACIFIC GAME TECHNOLOGY (HOLDING) LIMITED |
Defendant |
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The defendants did not appear
Dates of hearing: 10 and 18 October 2006
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Crown Copyright ©
Introduction
The PSP Console and its Accessories
Witnesses
The Intellectual Property Rights in issue.
(a) Registered Trade Marks. Five Community trade marks and one UK registered trade mark are relied upon, full details of which are set out in para 8 of the Particulars of Claim[5]. These registrations include the word PLAYSTATION. Ms. Toole exhibits the relevant certificates of registration.
(b) Registered Designs. Two designs are relied upon, one a UK registered design and the other a Community registered design[6].
(c) Copyright. Several copyright works are relied on including the computer programme or the PSP system software (together with upgrades thereof), the menu icons, the surface design of the box and the user manual.
Having regard to the evidence relating to these rights to which I already have referred, I have no doubt that the intellectual property rights in issue are subsisting and are owned by one or other of the Claimants. Of course, no attack has been made on the validity of any right in issue and having regard to the provenance of the impugned goods, unless they have been marketed/sold in the EEA with Sony's consent, no issue arises on infringement either.
The Particulars of Claim
The Law
(a) The Law on Community Exhaustion: Consent
'The Commission's view is that the question is not whether consent must be express or implied, but rather whether the trade mark proprietor has had a first opportunity to benefit from the exclusive rights he holds within the EEA.' [Emphasis added]
(1) On a proper construction of Article 7(1) of First Council Directive 89/104 EEC , the consent of a trade mark proprietor of the marketing within the EEA of products bearing that mark which had previously been place on the market outside the EU by the proprietor or with his consent could be implied where it followed from facts and circumstances, prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrated that the proprietor had renounced his right to oppose the placing of the goods on the market within the EEA.
(2) Implied consent cannot be inferred from the fact that the proprietor of the trade mark has not communicated to all subsequent purchasers of the goods placed on the market outside the EEA his opposition to marketing within the EEA; from the fact that the goods carry no warning of a prohibition of their being placed on the market within the EEA; from the fact that the trade mark proprietor has transferred the ownership of the goods bearing the trade mark without imposing any contractual reservations and that, according to the law governing the contract, the property right transferred includes, in the absence of such reservations, an unlimited right of resale or at the very least, a right to market the goods subsequently within the EEA.
(3) With regard to the exhaustion of the trade mark proprietor's exclusive right[10], it is not relevant that the importer of goods bearing the trade mark is not aware that the trade mark proprietor objects to their being placed on the market within the EEA or sold there by traders other than authorised retailers; or that the authorised retailers and wholesalers have not imposed on their own purchasers contractual reservations setting out such opposition, even though they have been informed of it by the trade mark proprietor. See generally §§ [44-46].
(b) Internet/website marketing in the UK/ EEA?
"Via the web you can look into the defendant's shop in Dublin"
Jacob J's approach was endorsed by the editors of Kerly's Law of Trade Marks etc 14th Edn §§ 23-059-23-060. I too shall adopt this approach in what follows.
The Facts
(a) The website is in English and English is its default language [see Annex 3 to the Particulars of Claim[11]].
(b) The prices quoted are in pounds sterling and sterling is the default currency when the site is accessed from England. Promotions are given in sterling as well.
(c) The PSP manuals are available on the website in various European languages including English.
(d) There are a number of testimonials on the website from UK purchasers.
(e) Pacific ran a free shipping promotion until the very day before the PSP Console was launched in Europe.
(f) A spurious EC Certificate of Conformity was included with the product shipped to Europe.
Conclusion
Note 1 Sony Computer Entertainment Europe Limited. The first Claimant is KK Sony Computer Entertainment which also trades as Sony Computer Entertainment Inc and is a company incorporated in Japan. It is responsible for the manufacture of PlayStation games consoles throughout the world . [Back] Note 2 PSP signifying ‘PlayStation Portable’. [Back] Note 3 By the use of a credit card . Details of the transaction are contained in an invoice annexed to the Particulars of Claim. [Back] Note 4 See Bundle D 80. The names of these witnesses are: Shuji Hiramatsu, Kojiro Umemura, Takshi Hatakeda, Tomonori Shimomura, Masafumi Chiba, Daisuke Miyazoe and Aoki Kayoko. [Back] Note 5 The numbers are UK Tm no 2224389 and Community Tms 1274547, 786715,1545094, 3193463 and 1352517. Full details are set out in Annex 1 to the Particulars of Claim. [Back] Note 6 These are UKRD No 3019042 and Community design No 244793 both of which relate to external aspects of the PSP Console: see Annex 2 to the Particulars of Claim. [Back] Note 7 Trade Marks Act 1994, s 10(1) and Community Trade Mark Regulation Art 9(1)(a) [Back] Note 8 Registered Designs Act 1949 as amended by Registered Designs Regulations 2001 and/or the Community Designs Regulation Art 19. [Back] Note 9 Copyright, Designs and Patents Act 1988 (‘CDPA’), ss 16-18 [Back] Note 10 Defined in § 32 [Back] Note 11 User guides are also offered in French and Spanish: see p. 3 of 10 of Annex 3. [Back]