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."
