CJEU, 10th chamber, January 18, 2024, No C-367/21

THE COURT (Tenth Chamber),

1 This request for a preliminary ruling concerns the interpretation of the second sentence of Article 36 TFEU, read together with Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), the second subparagraph of Article 19(1) TEU, and Articles 34, 35 and 36 TFEU.

2 The request has been made in proceedings between Hewlett Packard Development Company LP, established in the United States of America (‘Hewlett Packard’), and Senetic S.A., established in Poland, concerning the marketing by the latter of computer equipment bearing EU trade marks of which Hewlett Packard is the proprietor.

 Legal context

 European Union law

 Regulation (EC) No 207/2009

3 Recital 9 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1) stated:

‘It follows from the principle of free movement of goods that the proprietor of a [European Union] trade mark must not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the [European Union], under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods.’

4 Article 9 of that regulation, headed ‘Rights conferred by an [EU] trade mark’, provided:

‘1. ‘An [EU] trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the [EU] trade mark in relation to goods or services which are identical with those for which the [EU] trade mark is registered;

…

2. The following, inter alia, may be prohibited under paragraph 1:

…

(b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under that sign;

…’

5 Article 13 of that regulation, entitled ‘Exhaustion of the rights conferred by an [EU] trade mark’, was worded as follows:

‘1. A[n EU] trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the [European Union] under that trade mark by the proprietor or with his consent.

2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.’

6 Regulation No 207/2009 was repealed and replaced, with effect from 1 October 2017, by Regulation 2017/1001.

 Regulation 2017/1001

7 Recital 17 of Regulation 2017/1001 states:

‘In order to reconcile the need to ensure the effective enforcement of trade mark rights with the necessity to avoid hampering the free flow of trade in legitimate goods, the entitlement of the proprietor of the EU trade mark should lapse where, during the subsequent proceedings initiated before the European Union trade mark court (‘EU trade mark court’) competent to take a substantive decision on whether the EU trade mark has been infringed, the declarant or the holder of the goods is able to prove that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.’

8 Recital 22 of that regulation states:

‘It follows from the principle of free movement of goods that it is essential that the proprietor of an EU trade mark not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the European Economic Area, under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods.’

9 Article 9 of that regulation, headed ‘Rights conferred by an EU trade mark’, provides:

‘1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.

2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:

(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;

…

3. The following, in particular, may be prohibited under paragraph 2:

…

(b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the sign;

…’

10 Article 15 of that regulation, headed ‘Exhaustion of the rights conferred by an EU trade mark’, provides:

‘1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.

2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.’

 Directive 2004/48/EC

11 Article 1 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45, and corrigendum in OJ 2004 L 195, p. 16), headed ‘Subject matter’, provides:

‘This Directive concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights. For the purposes of this Directive, the term “intellectual property rights” includes industrial property rights.’

12 Article 2 of that directive, headed ‘Scope’, provides in paragraph 1:

‘Without prejudice to the means which are or may be provided for in [Union] or national legislation, in so far as those means may be more favourable for rightholders, the measures, procedures and remedies provided for by this Directive shall apply, in accordance with Article 3, to any infringement of intellectual property rights as provided for by [Union] law and/or by the national law of the Member State concerned.’

13 Chapter II of that directive, headed ‘Measures, procedures and remedies’, contains, inter alia, Article 3 thereof, headed ‘General obligation’, which provides in paragraph 2:

‘Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.’

14 Article 6 of that directive, headed ‘Evidence’, provides in paragraph 1:

‘Member States shall ensure that, on application by a party which has presented reasonably available evidence sufficient to support its claims, and has, in substantiating those claims, specified evidence which lies in the control of the opposing party, the competent judicial authorities may order that such evidence be presented by the opposing party, subject to the protection of confidential information. For the purposes of this paragraph, Member States may provide that a reasonable sample of a substantial number of copies of a work or any other protected object be considered by the competent judicial authorities to constitute reasonable evidence.’

 Polish law

15 Article 325 of the ustawa – Kodeks postępowania cywilnego (Law on the Code of Civil Procedure) of 17 November 1964, in the version applicable to the main proceedings (‘the Code of Civil Procedure’), is worded as follows:

‘The operative part of the judgment shall contain the name of the court, the names of the judges, the registrar and the prosecutor, if the latter has intervened in the case, the date and place of the hearing and the delivery of the judgment, the names of the parties, an indication of the subject matter of the case, and the decision of the court on the parties’ claims.’

16 Article 758 of the Code of Civil Procedure provides:

‘The sądy rejonowe (District Courts, Poland) and the bailiffs attached to those courts are competent in matters of enforcement.’

17 Article 767 of that code provides:

‘1. Except as otherwise provided by law, acts of the bailiff may be appealed before the District Court. An appeal shall also be possible against the omission of a bailiff to act. The appeal shall be heard by the court with jurisdiction in the place where the bailiff has its registered office.

2. An appeal may be brought by a party or another person whose rights have been infringed or threatened by the act or omission of the bailiff.

…’

18 Article 840 of the code provides, in paragraph 1 thereof:

‘The debtor may seek by way of appeal the annulment, in whole or in part, or the limitation, of the enforceable effect of the enforcement instrument where:

(1) he or she disputes the facts that gave rise to the enforcement terms imposed, in particular where he or she contests the existence of the obligation established by an enforcement instrument, other than a judicial decision or where he or she contests the transfer of an obligation despite there being a formal document that attests to that transfer;

(2) after the enforcement instrument was issued, an event occurred as a result of which the obligation has lapsed or cannot be enforced; if the instrument is a judicial decision, the debtor may also base his or her appeal on events occurring after the hearing was closed, on the plea that the obligation has been performed, where reliance on that plea in the case in question was inadmissible ex lege, and on the plea of set off.

…’

19 Article 843(3) of the same code provides:

‘In the appeal, the appellant shall set out all of the complaints that may be raised at that stage, otherwise he or she will lose the right to rely on them at subsequent stages of the proceedings.’

20 Article 1050 of the Code of Civil Procedure provides:

‘1. Where a debtor is required to perform an act which cannot be performed for him by another person and the performance of which is solely of his or her volition, the court in whose jurisdiction the act is to be performed shall, at the request of the creditor and after hearing the parties, fix a time limit for the debtor to perform the act. Should the debtor fail to perform within the time limit fixed, he or she shall be liable for a fine.

…

3. If the time limit prescribed for the debtor to perform the act expires without the debtor having performed it, the court shall, at the request of the creditor, impose a fine on the debtor and at the same time fix a new time limit for the performance of the act, on pain of an increased fine.’

21 Article 1051(1) of that code is worded as follows:

‘Where the debtor is bound by the obligation not to perform a certain act or not to obstruct the creditor’s acts, the court in whose jurisdiction the debtor has failed to discharge his or her obligation shall, at the creditor’s request, after hearing the parties and finding that the debtor has failed to discharge his or her obligation, impose a fine on the debtor. The court shall proceed in the same manner in the event of a new application by the creditor.’

 The dispute in the main proceedings and the question referred for a preliminary ruling

22 Hewlett Packard is the holder of exclusive rights to the EU word and figurative marks ‘HP’, registered under numbers 000052449 and 008579021 respectively.

23 It markets computer equipment bearing those marks through authorised agents who undertake not to sell those goods, except to end users, to persons other than those belonging to its distribution network. The authorised agents are also required to purchase those goods only from other authorised agents or from Hewlett Packard itself.

24 Each individual item of those goods has a serial number enabling it to be identified. Hewlett Packard has an IT tool that includes, inter alia, a database listing all the items and the market for which they are intended. However, there is no marking system for the items concerned, which alone would make it possible to identify whether or not a specific item was intended for the European Economic Area (EEA) market.

25 Senetic operates in the business of computer equipment distribution. It placed goods on the Polish market bearing Hewlett Packard’s EU trade marks. It purchased those goods from sellers based in the EEA, other than the official distributors of Hewlett Packard’s products, after obtaining an assurance from those sellers that marketing those goods in the EEA did not infringe Hewlett Packard’s exclusive rights. Senetic also sought, to no avail, confirmation from Hewlett Packard’s authorised agents that the goods concerned could be marketed in the EEA without infringing Hewlett Packard’s exclusive rights.

26 Hewlett Packard brought an action before the Polish courts seeking to stop the infringement of the rights conferred on it by its EU trade marks, by prohibiting Senetic, in general, from importing, exporting, advertising and storing for the abovementioned purposes computer equipment designated by those trade marks and not previously put on the market in the EEA by the applicant or with its consent. Hewlett Packard also requested that Senetic be ordered to withdraw those goods from the market.

27 In its defence, Senetic relies on the exhaustion of the rights conferred by the EU trade marks in question, arguing that the goods concerned were previously put on the market in the EEA by Hewlett Packard or with its consent.

28 The Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland), the referring court, notes that, in the absence of a marking system for Hewlett Packard goods, it is in practice very difficult for an independent distributor to identify the destination market for each of the products designated by the EU trade marks concerned, let alone to provide proof that the goods were placed on the market in the EEA by the proprietor of those marks or with its consent.

29 According to that court, Senetic could theoretically seek to obtain from its suppliers information as to the identity of the traders involved upstream in the distribution chain. However, as the Court recognised in its judgment of 8 April 2003, Van Doren + Q (C‑244/00, EU:C:2003:204), since suppliers are generally reluctant to disclose their sources of supply, it was unlikely that Senetic would be able to obtain that type of information.

30 In the first place, the practice of the Polish courts, in the operative part of their decisions upholding an action for the infringement of an EU trade mark, is to refer to ‘goods which have not previously been placed on the market within the [EEA] by the applicant (the proprietor of the EU trademark) or with its consent’. That formulation does not make it possible, at the stage of enforcement proceedings, to identify which goods are covered by those proceedings and to distinguish them from those covered by the exception based on the exhaustion of the rights conferred by the trade mark in question. Thus, the operative part of those decisions does not in fact impose on the parties to whom they are addressed a different obligation from the one that already flows from provisions of law.

31 As a result of that judicial practice, the defendant to an action for infringement is not in a position voluntarily to comply with a decision finding that there was an infringement and runs the risk of incurring the penalties provided by Articles 1050 and 1051 of the Code of Civil Procedure. In addition, that practice leads, most often, to the seizure of all goods, including those that circulate without there being any infringement of the right conferred by an EU trade mark.

32 Likewise, the result of, inter alia, Articles 767, 840 and 843 of the Code of Civil Procedure, is that, in the context of proceedings to secure claims and enforcement proceedings, the defendant to an action for infringement will, in the view of the referring court, be confronted with a number of legal obstacles to the possibility of successfully contesting the measures ordered in that regard and has only limited procedural guarantees.

33 First, under Article 767 of that code, as interpreted by the Polish courts, an appeal against an act of the court bailiff is possible only where the bailiff has not complied with the procedural rules governing the enforcement procedure. Thus, such an appeal does not make it possible to determine whether a product bearing an EU trade mark has been placed on the market within the EEA by the proprietor of that mark or with its consent.

34 Secondly, the defendant to an infringement action does not have the option of raising, on the basis of Article 840 of the Code of Civil Procedure, an anti-enforcement action, in so far as that type of action cannot serve as a basis for clarifying the content of a judicial decision constituting the enforcement instrument.

35 Thirdly, according to the prevailing opinion in Polish legal doctrine, the court with jurisdiction in enforcement proceedings may certainly hear the parties, but, pursuant to Article 1051 of the Code of Civil Procedure, the determination as to whether the defendant to the action for infringement has acted in accordance with the content of the enforcement instrument may be made only in the light of the elements that emerged from hearing the parties, without it being possible to take evidence.

36 Fourthly, pursuant to Article 843(3) of the Code of Civil Procedure, where the debtor brings an appeal in the context of the enforcement proceedings, the debtor must raise all the complaints that it is in a position to invoke, on pain of losing the right to raise them in the subsequent course of the proceedings.

37 Therefore, in the opinion of the referring court, there is a risk that the judicial protection effective in the area of the free movement of goods is restricted due to the Polish judicial practice concerning the formulation of the operative part of decisions declaring an infringement of a trade mark.

38 In the second place, the referring court notes that, according to the case-law of the Court of Justice, the protection of exclusive intellectual property rights is not absolute. First, it is limited to the situation in which the use of a trade mark by a person other than its proprietor impairs the functions of the trade mark. Secondly, exercising exclusive rights requires a balance to be struck between those rights and the protection of the freedoms of the internal market, including, inter alia, the free movement of goods.

39 Thus, the referring court questions the possibility of applying, in the factual circumstances of the dispute before it, the reversal of the burden of proof made by the Court of Justice in the judgment of 8 April 2003, Van Doren + Q (C‑244/00, EU:C:2003:204), or even of excluding the option for the trade mark proprietor to avail himself of the protection conferred by Article 9 and Article 102 of Regulation No 207/2009, now Article 9 and Article 130 of Regulation No 2017/1001, respectively.

40 In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must the second sentence of Article 36 TFEU, read in conjunction with Article 15(1) of Regulation [2017/1001] and with the [second subparagraph] of Article 19(1) [TEU], be interpreted as precluding the practice of the national courts of the Member States, which is that the courts:

– when upholding claims by right holders to prohibit the importation, exportation and advertising of goods bearing the EU trade mark or to order their withdrawal from the market;

– when ruling, in protective proceedings relating to the seizure of products bearing an EU trade mark,

refer in their rulings to ‘goods which have not been put on the market within the [EEA] by the right holder or with his consent’, with the result that it is left to the enforcement authority, in view of the general wording of the ruling, to determine which items bearing the EU trade mark are subject to the injunctions and prohibitions granted (that is to say, which items have not been put on the market within the [EEA] by the right holder or with his consent) [and the authority relies, in making the findings set out, on statements of the right holder or tools supplied by him (including IT tools and databases)], while the possibility of challenging the aforementioned findings of the enforcement authority before a court in declaratory proceedings is excluded or limited by the nature of the legal remedies available to the defendant in proceedings to secure claims and in enforcement proceedings?

(2) Must Articles 34, 35 and 36 [TFEU] be interpreted as precluding the holder of the registration of a Community (now EU) trade mark from relying on the protection provided for in Articles 9 and 102 of Regulation [No 207/2009] (now Articles 9 and 130 of Regulation [2017/1001] in a situation where:

– the holder of the registration of the Community (EU) trade mark distributes, within and outside the [EEA], goods bearing that mark through authorised distributors, who may resell the goods bearing the trade mark to persons who are not the final recipients of those goods [only if they belong] exclusively to the official distribution network – and at the same [time] the authorised distributors are required to purchase the goods only from other authorised distributors or from the right holder;

– the goods bearing the trade mark have no other markings or distinctive characteristics which would make it possible to determine where they have been put on the market by the right holder or with his consent;

– the defendant acquired the goods bearing the mark in the [EEA];

– the defendant collected statements from the sellers of goods bearing the mark to the effect that they may be marketed, in accordance with the law, in the [EEA];

– the holder of the registration of the EU trade mark does not provide any IT tool (or other tool) or use a system of markings – which enables the potential purchasers of the goods bearing the mark to verify independently the legality of marketing those goods in the [EEA] before purchasing them – and refuses to carry out such verification at the purchaser’s request?’

 Procedure before the Court

41 By decision of the President of the Court of 29 November 2021, the proceedings in the present case were stayed until delivery of the judgment of 17 November 2022, Harman International Industries (C‑175/21, EU:C:2022:895).

42 Following a decision of the President of the Court of 28 November 2022, the Court Registry notified the referring court of that judgment, asking it whether, in the light of that judgment, it wished to maintain the request for a preliminary ruling, particularly as regards the first question referred. In that judgment, the Court held that Article 15(1) of Regulation 2017/1001, read in combination with the second sentence of Article 36 TFEU, Article 47 of the Charter of Fundamental Rights of the European Union and Directive 2004/48, must be interpreted as not precluding a judicial practice by which the operative part of the decision upholding an action for infringement of an EU trade mark is drafted in terms which, owing to their general nature, leaves it to the authority with competence to enforce that decision to determine the goods to which that decision applies, provided that, in the context of the enforcement procedure, the defendant is permitted to contest the determination of the goods covered by that procedure and that a court may examine and decide, in compliance with the provisions of Directive 2004/48, which goods have in fact been placed on the market in the EEA by the proprietor or with its consent.

43 By letter of 3 February 2023, received at the Court Registry on the same day, the referring court informed the Court of Justice that it was withdrawing its first question, but that it was maintaining the second.

 Consideration of the question referred

44 As a preliminary point, it should be borne in mind that, in the procedure laid down by Article 267 TFEU providing for cooperation between national courts and the Court of Justice, it is for the latter to provide the national court with an answer which will be of use to it and enable it to decide the case before it. To that end, the Court may have to reformulate the questions referred to it. Furthermore, the Court may decide to take into consideration rules of EU law to which the national court has made no reference in the wording of its question (see, to that effect, judgment of 17 November 2022, Impexeco and PI Pharma, C‑253/20 and C‑254/20, EU:C:2022:894, paragraph 40 and the case-law cited).

45 In the present case, by its question referred for a preliminary ruling, the referring court seeks an interpretation of Articles 34, 35 and 36 TFEU in order to ascertain whether those provisions preclude the proprietor of an EU trade mark from being able to rely on the protection conferred by Article 9 of Regulation No 207/2009, or by Article 9 of Regulation 2017/1001, in the circumstances it sets out.

46 In that respect, however, it should be emphasised that Article 13 of Regulation No 207/2009 and Article 15 of Regulation 2017/1001 comprehensively regulate the question of the exhaustion of the rights conferred by the trade mark in respect of goods put on the market in the European Union or in the EEA, respectively.

47 Moreover, as is apparent from paragraph 39 of the present judgment, the referring court questions, more specifically, whether, in circumstances such as those of the main proceedings, the burden of proof of the exhaustion of the rights conferred by the EU trade marks concerned may fall exclusively on the defendant to the action for infringement.

48 In those circumstances, it must be considered that, by its question, the referring court is asking, in essence, whether Article 13(1) of Regulation No 207/2009 and Article 15(1) of Regulation 2017/1001, read in conjunction with Articles 34 and 36 TFEU, must be interpreted as precluding the burden of proof of exhaustion of the rights conferred by an EU trade mark being borne exclusively by the defendant to the action for infringement where the goods bearing that trade mark, which do not bear any marking enabling third parties to identify the market on which they are intended to be marketed and which are distributed through a selective distribution network whose members may resell them only to other members of that network or to end users, have been purchased by that defendant in the European Union, or in the EEA, after having obtained an assurance from the sellers that they could be marketed legally there, and the proprietor of that trade mark refuses to carry out that verification at the purchaser’s request.

49 Article 9 of Regulation No 207/2009, now Article 9 of Regulation 2017/1001, confers on the EU trade mark proprietor exclusive rights which entitle it to prevent any third party from, inter alia, importing goods bearing the mark, offering the goods, putting them on the market or stocking them for these purposes without its consent (judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 37 and the case-law cited).

50 Article 13(1) of Regulation No 207/2009, now Article 15(1) of Regulation 2017/1001, contains an exception to that rule in that it provides that the trade mark proprietor’s rights are exhausted where goods bearing that mark have been put on the market in the European Union or in the EEA by the proprietor itself or with its consent (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 38 and the case-law cited). That provision is intended to reconcile the fundamental interest in protecting the rights conferred by that trade mark, on the one hand, with the fundamental interest in the free movement of goods within the European Union or EEA, on the other (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 40 and the case-law cited).

51 In order to ensure a fair balance between those fundamental interests, the possibility of relying on the exhaustion of the rights conferred by an EU trade mark, as an exception to those rights, is limited in several respects (judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 41).

52 In particular, Article 13(1) of Regulation No 207/2009 and Article 15(1) of Regulation 2017/1001 enshrine the principle of exhaustion of the rights conferred by the EU trade mark only in relation to goods which have been put on the market in the European Union or EEA, respectively, by the proprietor or with his consent (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 42 and the case-law cited).

53 It follows that the placing on the market of goods bearing that mark outside the European Union, or outside the EEA, does not exhaust the proprietor’s right to oppose, in particular, the importation and the placing on the market in the European Union, or in the EEA, of those goods without its consent, thus allowing it to control the initial marketing in the European Union, or in the EEA, of goods bearing the mark (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 43 and the case-law cited).

54 Thus, the right conferred by that trade mark is exhausted only for individual items of a given product which have been put on the market within the territory of the European Union or the EEA with the proprietor’s consent. The fact that the trade mark proprietor has already put on the market, in the European Union or EEA, other items of the same product or similar products to those imported for which exhaustion is invoked does not suffice (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 45 and the case-law cited).

55 As regards the question of which party bears the burden of proof of the exhaustion of the rights conferred by the EU trade mark, it should be noted, first, that that question is governed neither by Article 13 of Regulation No 207/2009, nor by Article 15 of Regulation 2017/1001, nor by any other provision of those two regulations.

56 Secondly, although the procedural aspects of compliance with intellectual property rights, including the exclusive right under Article 9 of Regulation No 207/2009, now Article 9 of Regulation 2017/1001, are governed, in principle, by national law, as harmonised by Directive 2004/48 – which, as is clear from Articles 1 to 3 in particular, concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 56) – it must be observed that that directive, in particular Articles 6 and 7 thereof, which come within Chapter II, Section 2 headed ‘Evidence’, does not govern the question of the burden of proof of the exhaustion of the rights conferred by the trade mark.

57 Nevertheless, the Court has on a number of occasions already held that a trader that holds goods bearing an EU trade mark placed on the market in the EEA by the proprietor of that trade mark or with its consent derives rights under the free movement of goods, guaranteed by Articles 34 and 36 TFEU and Article 15(1) of Regulation 2017/1001, which the national courts must safeguard (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 69 and the case-law cited).

58 In that regard, although the Court has held that, in principle, a rule of national law of a Member State under which the exhaustion of the rights conferred by a trade mark constitutes a plea in defence is consistent with EU law, so that the burden of proof falls on the defendant relying on that plea, it has also clarified that the requirements deriving from the protection of the free movement of goods may mean that that rule of evidence needs to be qualified (see, to that effect, judgment of 8 April 2003, Van Doren + Q, C‑244/00, EU:C:2003:204, paragraphs 35 to 37).

59 Thus, the national rules governing how evidence of the exhaustion of the rights conferred by a trade mark is to be adduced and appraised must comply with the requirements arising from the principle of the free movement of goods. As a result, they must be qualified when they are likely to allow the proprietor of that trade mark to partition national markets and thus help to maintain price differences between Member States (see, to that effect, judgment of 17 November 2022, Harman International Industries, C‑175/21, EU:C:2022:895, paragraph 50 and the case-law cited).

60 Accordingly, where the defendant to the action for infringement manages to establish that there is a real risk of partitioning of national markets, should it have to bear the burden of proving that the goods were put on the market in the European Union, or in the EEA, by the proprietor of the trade mark or with his consent, it is for the national court hearing the case to qualify the burden of proof of the exhaustion of the rights conferred by the trade mark (see, to that effect, judgment of 8 April 2003, Van Doren + Q, C‑244/00, EU:C:2003:204, paragraph 39).

61 In the present case, it is apparent from the request for a preliminary ruling that the proprietor of the EU trade marks operates a selective distribution system under which the goods bearing those trade marks do not bear any marking enabling third parties to identify the market on which they are intended to be marketed, that the proprietor refuses to communicate that information to third parties and that the defendant’s suppliers are not inclined to reveal their own sources of supply.

62 In that last regard, it should be noted that, in such a distribution system, the supplier generally undertakes to sell the contract goods or services, either directly or indirectly, only to distributors selected on the basis of specified criteria, while the distributors undertake not to sell such goods or services to unauthorised distributors within the territory defined by the supplier for the implementation of that distribution system.

63 In such circumstances, placing the burden of proving where the goods bearing the trade mark were first put on the market by the proprietor of that mark, or with his consent, on the defendant to the action for infringement could allow the proprietor to oppose parallel imports of the goods bearing that trade mark, even though the resulting restriction on the free movement of goods would not be justified by the protection of the rights conferred by that mark.

64 Indeed, the defendant to the action for infringement would experience considerable difficulties in adducing such evidence, given the understandable reluctance of its suppliers to reveal their source of supply within the distribution network of the proprietor of the EU trade marks concerned.

65 Further, even if the defendant to the action for infringement managed to establish that the goods bearing the EU trade marks concerned originated from the selective distribution network of the proprietor of those trade marks in the European Union or EEA, the proprietor would be able to prevent any possibility of obtaining supplies in future from the member of its distribution network which had breached its contractual obligations (see, to that effect, judgment of 8 April 2003, Van Doren + Q, C‑244/00, EU:C:2003:204, paragraph 40).

66 Therefore, in circumstances such as those described in paragraph 61 above, it will be for the national court hearing the case to qualify the burden of proof of the exhaustion of the rights conferred by the EU trade marks concerned by placing on the proprietor the burden of establishing that the items of the products concerned were initially placed on the market for the first time outside the European Union or EEA by him or with his consent. If such evidence is adduced, it will be for the defendant to the action for infringement to establish that those items were subsequently imported into the EEA by the trade mark proprietor or with his consent (see, to that effect, judgment of 8 April 2003, Van Doren + Q, C‑244/00, EU:C:2003:204, paragraph 41 and the case-law cited).

67 Having regard to all the foregoing considerations, the answer to the question referred is that Article 13(1) of Regulation No 207/2009 and Article 15(1) of Regulation 2017/1001, read in conjunction with Articles 34 and 36 TFEU, must be interpreted as precluding the burden of proof of exhaustion of the rights conferred by an EU trade mark being borne exclusively by the defendant to the action for infringement where the goods bearing that trade mark, which do not bear any marking enabling third parties to identify the market on which they are intended to be marketed and which are distributed through a selective distribution network whose members may resell them only to other members of that network or to end users, have been purchased by that defendant in the European Union, or in the EEA, after having obtained an assurance from the sellers that they could be marketed legally there, and the proprietor of that trade mark refuses to carry out that verification at the purchaser’s request.

 Costs

68 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the cost of those parties, are not recoverable.

On those grounds, the Court (Tenth Chamber) hereby rules:

Article 13(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, read in conjunction with Articles 34 and 36 TFEU,

must be interpreted as precluding the burden of proof of exhaustion of the rights conferred by an EU trade mark being borne exclusively by the defendant to the action for infringement where the goods bearing that trade mark, which do not bear any marking enabling third parties to identify the market on which they are intended to be marketed and which are distributed through a selective distribution network whose members may resell them only to other members of that network or to end users, have been purchased by that defendant in the European Union, or in the European Economic Area, after having obtained an assurance from the sellers that they could be marketed legally there, and the proprietor of that trade mark refuses to carry out that verification at the purchaser’s request.