HP and Compaq v Expansys - Grey Imports, why bother?

United Kingdom

In 2005 a large number of trade mark owners were successful in taking action against importers of grey market goods (i.e. goods first placed on the market outside of the EEA). The July 2005 case of HP and Compaq v Expansys is a good example of the ease in which trade mark owners are able to obtain summary judgment against the importers of such goods.

Expansys sold numerous HP products which it sourced from Asian distributors. In particular, Expansys sold large quantities of HP iPAQ PDAs previously manufactured and sold by Compaq. HP and Compaq took action against Expansys for trade mark infringement (for importing the Asian sourced iPAQs without permission) and applied for summary judgment.

Expansys argued that it had the following, at least arguable, defences: (i) that HP had delayed in taking action for two years; (ii) that HP had full knowledge of the oversupply to the Asian market and to the grey import practice; and (iii) that the claimants’ anti-competitive behaviour meant they were not entitled to prevent such importation. The court took the view that none of the defences claimed had any real prospect of success and HP were therefore awarded summary judgment.

This article first appeared in our Technology Annual Review, March 2006. To view this publication, please click here to open in a new window.