Industrial Property Law

The exhaustion of trademark rights presupposes that the product bearing the trademark has been placed on the market within the EU or EEA by the proprietor himself or by a third party who has the proprietor's consent. When the product is put on the market by a third party, the latter must be economically linked to the trademark proprietor  so that the latter retains control over the products, i.e. the power to determine the products to which the trademark may be affixed and to control their quality. Thus, the authorized third party may be the beneficiary of a license, a parent company, a subsidiary or an exclusive distributor, but not the beneficiary of an transfer of the mark, who is not economically linked to the proprietor by a license agreement or by reason of capital ties  . In the absence of the trademark proprietor's consent, the proprietor has a right of resale and control of the imported product in the EEA until the final purchaser .

Consent to marketing in the EEA must be expressed positively: silence on the part of the proprietor of the mark does not constitute consent. It may, however, be implied if elements and circumstances prior, concomitant or subsequent to the placing on the market outside the EEA, definitely reflect a waiver by the proprietor of his right to oppose a placing on the market in the EEA . This is the case if the proprietor of a trademark in a country outside the EU grants another undertaking an exclusive trademark license without any restriction as to the manufacture, marketing and export of the goods covered by the trademark . On the other hand, the placing on the market of goods covered by the trademark by the licensee in disregard of certain terms of the license agreement is considered to be done without the consent of the proprietor . Such terms relate to the duration of the license, the form covered by the registration in which the mark may be used, the nature of the goods or services for which the license is granted, the territory in which the trademark may be used, and the quality of the goods manufactured or services provided by the licensee.

ECJ Case C-9/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger, Judgment of 22 June 1994, LawLex200500005054JBJ.

ECJ Case C-355/96 Silhouette International Schmied GmbH & Co. KG, Judgment of 16 July 1998, LawLex200900000463JBJ; CA Paris, 3 April 2013, LawLex202200000568JBJ.

ECJ Case C-414/99 Zino Davidoff and Levi Strauss [2001] ECR I-8691, LawLex200900000760JBJ.

Cass. com. 9 April 2002, LawLex202200000570JBJ.

ECJ Case C-59/08  Copad SA v Christian Dior [2009] ECR I-3421, LawLex201000000965JBJ; Cass. com. 2 February 2010, LawLex202200000852JBJ.

113. Placing on the market by the proprietor or with his/her consent