Keywords
Summary

Keywords

1. Approximation of laws - Trade marks - Directive 89/104 - Product placed on the market in the Community or in the European Economic Area with the consent of the trade-mark proprietor - Concept of consent - Community concept - Uniform interpretation

(Council Directive 89/104, Arts 5 and 7(1))

2. Approximation of laws - Trade marks - Directive 89/104 - Exhaustion of the right conferred by a trade mark - Product put on the market outside the European Economic Area by the proprietor of the trade mark or with his consent - Imported into a Member State - Consent of the trade mark proprietor - Implied consent - Conditions

(Council Directive 89/194, Art. 7(1))

Summary

1. It falls to the Court to supply a uniform interpretation of the concept of consent to the placing of goods on the market within the European Economic Area as referred to in Article 7(1) of First Trade Mark Directive 89/104, as amended by the Agreement on the European Economic Area.

Consent, which is tantamount to the proprietor's renunciation of his exclusive right under Article 5 of the Directive to prevent all third parties from importing goods bearing his trade mark, constitutes the decisive factor in the extinction of that right. If the concept of consent were a matter for the national laws of the Member States, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned. The objective of the same protection under the legal systems of all the Member States set out in the ninth recital in the preamble to the Directive, where it is described as fundamental, would not be attained.

( see paras 41-43 )

2. On a proper construction of Article 7(1) of First Trade Mark Directive 89/104, as amended by the Agreement on the European Economic Area (EEA), the consent of a trade mark proprietor to the marketing within the EEA of products bearing that mark which have previously been placed on the market outside the EEA by that proprietor or with his consent may be implied, where it follows from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his right to oppose placing of the goods on the market within the EEA.

Implied consent cannot be inferred:

- from the fact that the proprietor of the trade mark has not communicated to all subsequent purchasers of the goods placed on the market outside the EEA his opposition to marketing within the EEA;

- from the fact that the goods carry no warning of a prohibition of their being placed on the market within the EEA;

- from the fact that the trade mark proprietor has transferred the ownership of the products bearing the trade mark without imposing any contractual reservations and that, according to the law governing the contract, the property right transferred includes, in the absence of such reservations, an unlimited right of resale or, at the very least, a right to market the goods subsequently within the EEA.

With regard to exhaustion of the trade mark proprietor's exclusive right, it is not relevant:

- that the importer of goods bearing the trade mark is not aware that the proprietor objects to their being placed on the market in the EEA or sold there by traders other than authorised retailers, or

- that the authorised retailers and wholesalers have not imposed on their own purchasers contractual reservations setting out such opposition, even though they have been informed of it by the trade mark proprietor.

( see paras 47, 60, 66, and operative part 1-3 )