Keywords
Summary

Keywords

Approximation of laws — Trade marks — Directive 89/104 — Exhaustion of the right conferred by a trade mark — Rule placing the burden of proof on the third party relying on exhaustion — Whether permissible — Limits — (Arts 28 and 30 EC; Council Directive 89/104, Art. 7(1))

Summary

A rule of evidence according to which exhaustion of the trade mark right constitutes a plea in defence for a third party against whom the trade mark proprietor brings an action, so that the existence of the conditions for such exhaustion must, as a rule, be proved by the third party who relies on it, is consistent with Community law and, in particular, with Articles 5 and 7 of First Directive 89/104 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area (EEA).

However, the requirements deriving from the protection of the free movement of goods enshrined, inter alia , in Articles 28 EC and 30 EC may mean that this rule of evidence needs to be qualified.

Accordingly, where a third party succeeds in establishing that there is a real risk of partitioning of national markets if he himself bears that burden of proof, particularly where the trade mark proprietor markets his products in the EEA using an exclusive distribution system, it is for the proprietor of the trade mark to establish that the products were initially placed on the market outside the EEA by him or with his consent. If such evidence is adduced, it is for the third party to prove the consent of the trade mark proprietor to subsequent marketing of the products in the EEA.

see para. 42, operative part