Nuplayer imported the much-desired PSPs from Japan – where they
have been on sale since December 2004 – and sold them over its
website to UK consumers. It had been doing this since January. This
is parallel importing: where branded goods intended for one market
are bought in another, taking advantage of differences in pricing
and/or availability.
There is a system of preventing parallel imports in the EU,
known as the exhaustion system. It provides that trade mark rights
cannot be invoked to restrain the free movement of goods bearing
those marks within the EU; but they can be used to restrain the
entry of such goods into the EU.
The PSP, which is designed to play games, films and music on the
move, was scheduled to be launched in Europe in March 2005, the
same date as its US launch. But the European launch was postponed
for six months because of supply difficulties and impatient gamers
turned to grey-market sales.
Sony has threatened a number of online retailers. It says its
concern with parallel imports is that they spoil the interest and
excitement that Sony wants to build for the European launch. It
also fears that its reputation will suffer among those who buy from
importers, pointing out that there won't be a Sony warranty, and
that Japanese products come with Japanese manuals.
It won a temporary injunction against tiny retailer
ElectricBirdLand last month, and last Thursday was awarded a full
injunction against Nuplayer.
Mr Justice Lawrence Collins agreed that Nuplayer's sales
infringed Sony’s UK and European trade marks in the stylised PS
logo, the term “PlayStation” and the PlayStation controller button
symbols.
“Nuplayer is plainly using the marks in relation to the goods,”
wrote the judge. “If that were not right, then the sale of
counterfeit goods over the internet would not be an infringement,
and it would also follow that every mark on products inside
packaging or on components inside a product would also not be an
infringement, including, for example, counterfeit batteries and
accessories.”
An offer by Nuplayer to obliterate the trade marks from the
products was rejected by the judge as making no difference. He
wrote:
"It is true that [The Trade Marks Act of
1994] provides that, where infringement has taken place, the court
may order the infringer to cause the offending sign to be 'erased,
removed or obliterated' from any infringing goods, but that is
merely one of the possible remedies, and cannot possibly found an
argument that products which would otherwise be infringing cease to
be so when the marks are erased or obliterated."
