Transcript No Slide Title

CIPIL: Exhaustion Without
Exasperation, 15 March 2014
Double Identity,
Origin Function and
International Exhaustion
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
Introduction
Art. 5(1)(a) TMD
…to prevent all third parties not having his
consent from using in the course of trade:
a) any sign which is identical with the trade mark in
relation to goods or services which are identical
with those for which the trade mark is registered;…
Really absolute?
• ECJ, 12 November 2002, case C-206/01,
Arsenal/Reed
‘It follows that the exclusive right under Article
5(1)(a) of the Directive was conferred in order to
enable the trade mark proprietor to protect his
specific interests as proprietor, that is, to ensure
that the trade mark can fulfil its functions.’
(para. 51)
Traditional focus on origin function
• ECJ, 12 November 2002, case C-206/01,
Arsenal/Reed
‘The exercise of that right must therefore be
reserved to cases in which a third party's use of
the sign affects or is liable to affect the functions
of the trade mark, in particular its essential
function of guaranteeing to consumers the origin
of the goods.’ (para. 51)
Identity
identical signs
identical goods
or services
adverse effect on one of the
protected trademark functions
CJEU, June 18, 2009, case C-487/07,
L’Oréal/Bellure
• ‘These functions include not only the essential
function of the trade mark, which is to guarantee
to consumers the origin of the goods or services,
but also its other functions, in particular that of
guaranteeing the quality of the goods or services
in question and those of communication,
investment or advertising.’ (para. 58)
• recognition of further protected functions,
in particular goodwill functions
Critique: imbalanced system
exclusive link
with a sign
advertising
quality control
creation of a
brand image
• Art. 5(1) TMD
(mandatory)
• Art. 5(2) TMD
(optional)
• consumer
protection
• protection of
investment
• only a few
specific
exceptions
• flexible
‘due cause’
defense
Commission Proposal
Art. 10(2)(a) Draft TMD
…to prevent all third parties not having his
consent from using in the course of trade
any sign in relation to goods or services
where:
a) the sign which is identical with the trade mark and
is used in relation to goods or services which are
identical with those for which the trade mark is
registered and where such use affects or is liable to
affect the function of the trade mark to guarantee to
consumers the origin of the goods or services;…
APRAM, p. 7
• Instead of providing legal certainty, this provision
generates great uncertainty and further limits the
protection of trade marks. Such a provision would
result in the recognition of international exhaustion
(which is in contradiction with articles 15 of the
Directive and 13 of the Regulation under which
exhaustion of rights is limited to the territory of the
Union). Indeed, in the case of parallel imports, the
owner of the trade mark will no longer be able to
prevent such parallel imports as the function of
origin will not be affected.
INTA, p. 15-16
INTA opposes these provisions, which could cause
uncertainty in a number of situations including: […]
• Parallel import cases where original goods have
been sold with the consent of the trademark owner
only outside the EU […] Trademark owners could
no longer enforce their rights against such goods
entering the EU and circulating within the EU,
since the origin function in these cases is not
affected (as the goods stem from the trademark
owner).
International
exhaustion?
Essential origin function
• ECJ, 12 November 2002, case C-206/01,
Arsenal/Reed
‘The exercise of that right must therefore be
reserved to cases in which a third party's use of
the sign affects or is liable to affect the functions
of the trade mark, in particular its essential
function of guaranteeing to consumers the origin
of the goods.’ (para. 51)
So did we always
have international
exhaustion without
ever realizing it?
And even if Commission
Proposal is rejected…
• we are now aware that the origin function
is not affected in case of parallel imports
from outside the EEA
• but it is also difficult to see why other
protected functions would be adversely
affected…
…so will we have international exhaustion
anyway (what we already had before but
never realized?)
Or do genuine
goods from outside
the EEA differ from
genuine goods within
the EEA?
More realistic scenario
Art. 15(1) Draft TMD
‘The 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.’
• CJEU will understand that regional
exhaustion is intended
• proposed new EU legislation leaves no
doubt about that
But then…
Adoption of Commission
Proposal preferable
…to prevent all third parties not having his
consent from using in the course of trade
any sign in relation to goods or services
where:
a) the sign which is identical with the trade mark and
is used in relation to goods or services which are
identical with those for which the trade mark is
registered and where such use affects or is liable to
affect the function of the trade mark to guarantee to
consumers the origin of the goods or services;…
Clear and balanced division of tasks
exclusive link
with a sign
advertising
quality control
creation of a
brand image
• Art. 5(1) TMD
• Art. 5(2) TMD
• protection
against
confusion
• protection
against
dilution
• only a few
specific
exceptions
• flexible
‘due cause’
defence
The end. Thank you!
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