Industrial Property Law

The rights conferred on the proprietor to the trademark by Articles L. 713-1 to L. 713-3-4 of the Intellectual Property Code are limited by the principle of exhaustion of rights, according to which a proprietor may not prohibit the use of his trademark for products that have been put on the market in the EU or in the European Economic Area (EEA) under that trademark by him/her or with his/her cons …

Principle

The rights conferred on the proprietor to the trademark by Articles L. 713-1 to L. 713-3-4 of the Intellectual Property Code are limited by the principle of exhaustion of rights, according to which a proprietor may not prohibit the use of his trademark for products that have been put on the market in the EU or in the European Economic Area (EEA) under that trademark by him/her or with his/her consent (Art. L. 713-4, para. 1, IP Code). However, the trademark owner may oppose any new act of commercialization if he or she can show legitimate reasons, in particular with regard to the subsequent modification or alteration of the condition of the goods (Art. L. 713-4, para. 2, IP Code).

The principle of exhaustion of rights, which stems from the case law of the Court of Justice, responds to the need to reconcile the free movement of goods and intellectual property. The free movement of goods is a founding principle of the Single Market enshrined in Article 34 of the Treaty on the Functioning of the European Union (TFEU), under which quantitative restrictions on imports, and all measures having equivalent effect, are prohibited between Member States. Article 36 TFEU specifies that, while prohibitions or restrictions on imports, exports or transit which are justified on the grounds of the protection of industrial and commercial property are permitted, they must not constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.

The Court of Justice first laid down the principle of exhaustion of rights in respect of rights related to copyright  and subsequently, in a ruling dated 31 October 1974  in respect of trade mark rights, stated that the specific purpose of commercial property is to ensure that the proprietor of a trade mark has the exclusive right to use it for the first time when a product is put into circulation, in order to protect him or herself against competitors who would seek to abuse the proprietor's position and his or her reputation by selling products which are unduly provided with it. The Court concludes that the proprietor cannot oppose the importation of a product bearing the trademark if that product has been lawfully placed on the market of another Member State by him or with his consent. In other words, the exclusive right to the trademark may not impede the free movement of goods beyond what is required to safeguard the specific purpose of the trademark and its essential function of guaranteeing the origin of the product. The principle of exhaustion of rights was enshrined in Article 7 of Directive No 89/104 of 21 December 1988, and then reproduced in Article 15 of Directive 2015/2436 of 16 December 2015.

ECJ Case 78/70 Deutsche Grammophon Gesellschaft mbH, Judgment of 8 June 1971, LawLex200400002881JBJ.

ECJ Case 16/74 Centrafarm (BV), Judgment of 31 October 1974, LawLex200400003449JBJ.

Industrial Property Law

111. Principle

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111. Principle

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Les décisions de justice citées dans ce paragraphe :

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Les notions juridiques connexes

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