Refits and Trade Marks: Striking the Balance Between Innovation and
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September 23, 2024

There is a thriving industry in refits of well-known products. This runs from clever retrofitting of everyday vans to turn them into upscale campers – fitouts of containers for re-use for inhabitation – car customisation and retuning – and even range cookers.

Trade mark owners of the original products take varying views on this. The resale of original products in the same territory as the first sale normally cannot be controlled by trade mark law under the legal concept of exhaustion. However, some important exceptions apply and retrofitters do sometimes end up pushing things too far.

Importantly, the trade mark owner can oppose further dealings in the goods ‘where there exist legitimate reasons’, ‘(in particular, where the condition of the goods has been changed or impaired after they have been put on the market).’ The courts have been grappling over the years with how far this goes in terms of what it meant by legitimate reasons or how far the retrofitter can go in changing the goods whilst still using the original trade mark.

Simple refurbishment and renewal (done to a reasonable standard) seems to be fine; conversion is a different matter. UK Innovations Group were selling an eControl system for use in range cookers, including AGA cookers. AGA were happy with UKIG selling the eControl system on its own, but didn’t want them reselling second-hand AGAs refitted with the UKIG system. The Intellectual Property and Enterprise Court allowed UKIG to carry on selling these products especially as the evidence did not convince the Court that the works done would risk serious damage to the reputation of AGAs trade marks.

However, the Court was not happy with how UKIG used the term AGA. References to ‘eControl AGAs’ and ‘Controllable AGA Cookers’ available in ‘AGA Colours’ were deemed to be infringing.

The message to trade mark owners is to be careful. Passively allowing retrofitters to sell novel parts used with your product may mean you can’t stop them from selling their parts with second-hand products. Retrofitters also have to be on the mark when they market the goods. It can be easy to overstep the mark: giving the impression of a connection with the original trade mark owner can be open to challenge. Prominent disclaimers can help, but may not be conclusive.


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