An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute implied consent for the resale within the EEA of goods otherwise than in accordance with a licence from the Trade Mark owner in cases where he sought to establish a scheme of distributing only to licensed distributors and sales outlets. A consent might be implied in other circumstances. Exhaustion of rights did not take place by marketing the goods outside the EEA. Explicit consent was necessary for any exhaustion of rights, and it was for the trader alleging consent to prove it. Articles 5 to 7 of the directive embody a ‘complete harmonisation’ of the rules relating to the rights conferred by a trade mark, define the rights of trade mark proprietors in the Community.
Europa Trade marks – Directive 89/104/EEC – Article 7(1) – Exhaustion of the rights conferred by a trade mark – Goods placed on the market outside the EEA -Imported into the EEA – Consent of the trade mark proprietor – Whether consent required to be express or implied – Law governing the contract -Presumption of consent – Non-applicability.
(1) Articles 5 and 7TMD embodied a complete harmonisation of the rules relating to the rights conferred by a mark and the limitation on the rule of European Union exhaustion; (2) the mere fact that the proprietor of a trade mark has consented to the first marketing of goods using his mark outside the EEA does not mean that he has consented to the marketing of those goods in the EEA., and (3) the proprietor of a mark does not have to ensure that those goods bear a warning that they may not be placed on the market within the EEA. Therefore, the proprietor of a trade mark has the right to control whether or not goods using his mark are first marketed in the EEA.
Judges:
Rodriguez Iglesias, P and Judges P. Jann, N. Colneric, S. von Bahr, C. Gulmann, D. A. O. Edward, A. La Pergola, J.-P. Puissochet, L. Sevon, V. Skouris and C. W. A. Timmermans Advocate General C. Stix-Hackl
Citations:
Times 23-Nov-2001, C-416/99, C-414/99, C-415/99, [2002] 1 CMLR 1, [2001] EUECJ C-414/99, [2001] EUECJ C-415/99, [2001] EUECJ C-416/99, [2002] RPC 20, [2001] ECR I-8691, [2002] 2 WLR 321, [2002] CEC 154, [2002] All ER (EC) 55, [2002] Ch 109, [2002] ETMR 9
Links:
Statutes:
Jurisdiction:
European
Citing:
Cited – Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH ECJ 16-Jul-1998
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. . .
Cited – Sebago and Maison Dubois et Fils SA v GB-Unic SA ECJ 1-Jul-1999
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual . .
Referral – Zino Davidoff SA v A and G Imports Ltd ChD 24-May-1999
Though a company could prevent parallel import within the EU, it could not prevent goods sold outside the EU but without restriction on re-sale, being subsequently re-sold into the EU. The removal of a numbering mark did not materially reduce its . .
Cited by:
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Roche Products Ltd and Another v Kent Pharmaceuticals Ltd CA 20-Dec-2006
The defendant appealed summary judgment in a trade mark infringement case based on parallel imports of ACCU-CHEK blood testing strips for diabetics. The defendant said that the products were ‘CE’ marked and therefore intended for sale within the EU. . .
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Cited – Eli Lilly and Company and Another v 8PM Chemist Ltd CA 5-Feb-2008
The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the . .
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.
Intellectual Property, European, Commercial
Updated: 04 June 2022; Ref: scu.166851
