The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights.
Held: The burden of proving exhaustion of rights lay on the defendant, unless he could show that the result would be to create a real risk of the partitioning of the market. If he established that, then the burden of proving that the products had been placed on the market outside the EEAwith his consent so as to disapply article 7(1). The parties disoputed whether the goods were first marketed in the EEA. The importer argued that to disclose its sources would deter its suppliers in the future, thus enabling the proprietor to partition the market in the EEA. The Court of Justice held that Articles 28 and 30EC were applicable so that in such circumstances the proprietor had to show initially that the goods were not first marketed in the EEA with its consent. The Advocate General considered whether there was a duty on the proprietor to assist the importer identify the source of goods.
Citations:
C-244/00, Times 29-Apr-2003, [2003] EUECJ C-244/00, [2003] ECR I-3051, [2003] CEC 348, [2003] 2 CMLR 6, [2004] All ER (EC) 912, [2003] ETMR 75
Links:
Statutes:
First Council Directive 89/104/EEC Art 7
Cited by:
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Cited – Oracle America Inc v M-Tech Data Ltd and Another CA 24-Aug-2010
The claimant sought to prevent import from China of its own second hand computer disc drives said to infringe its trade marks. It had granted an exclusive licence for the sale of its equipment in Europe and alleged that this was a parallel import. . .
Cited – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 07 June 2022; Ref: scu.180810