Nomination Di Antonio E Paolo Gensini SNC & Anor v Brealey & Anor (t/a JSC Jewellery)
Decision date: 13 March 2019
Neutral citation: [2019] EWHC 599 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This case concerned Nomination's claim that JSC unlawfully disassembled genuine Nomination bracelets and sold individual branded base links (and used the NOMINATION sign on its own charms), raising issues of trade mark exhaustion and passing off. The court held that Nomination could oppose onward sales of the genuine base links because JSC's low‑quality packaging and presentation were likely to damage the trade marks' reputation, and that JSC's use of NOMINATION in relation to its own charms caused consumer confusion, amounting to trade mark infringement and passing off. Nomination was found to have suffered reputational damage.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
The judge held that the trade mark proprietor may lawfully oppose further commercialisation of genuine branded components where the reseller's presentation (notably poor packaging or presentation that is likely to harm the mark's luxury image) gives rise to a legitimate reason under art.7(2)/s.12(2) to prevent exhaustion applying; exhaustion on sale does not automatically extend to component parts if such legitimate reasons exist.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment noted that the Bristol‑Myers Squibb (BMS) conditions on repackaging provide useful guidance, but that the condition requiring labelling who repackaged is less apt for non‑sensitive goods such as jewellery; and that poor packaging or presentation that detracts from a mark's luxury image can constitute a legitimate reason to oppose parallel resale.