Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)

Ten years ago, I published an article in the Marquette Intellectual Property Law Review titled “Trademark Exhaustion in the European Union: Community-Wide or International? The Saga Continues.” In that article, I described the development of the principle of trademark exhaustion in the European Unio...

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Main Author: CALBOLI, Irene
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Language:English
Published: Institutional Knowledge at Singapore Management University 2012
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Online Access:https://ink.library.smu.edu.sg/sol_research/2320
https://ink.library.smu.edu.sg/context/sol_research/article/4272/viewcontent/TrademarkExhaustion.pdf
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spelling sg-smu-ink.sol_research-42722017-10-30T06:30:48Z Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later) CALBOLI, Irene Ten years ago, I published an article in the Marquette Intellectual Property Law Review titled “Trademark Exhaustion in the European Union: Community-Wide or International? The Saga Continues.” In that article, I described the development of the principle of trademark exhaustion in the European Union (EU) and analyzed the interplay among trademark protection, trademark territoriality, and the treatment of the parallel importation of gray market products—unauthorized genuine goods imported from foreign countries—under Article 7 of the Trademark Directive (Article 7). In this Essay, I continue to explore, ten years after my 2002 article, the development of the principle of trademark exhaustion in the EU. In particular, I analyze the recent jurisprudence of the CJEU on the application of Article 7 and recount the most relevant trends in the recent CJEU’s decisions in this area. Although the focus of this Essay is primarily descriptive, I offer some critical considerations in the light of recent CJEU’s decisions. I thus argue that in its recent line of cases, the CJEU seems increasingly willing to shrink, de facto, the application of the principle of trademark exhaustion not solely to products imported from outside the EEA, but also to intra-EEA trade. Most notably, I highlight that the CJEU seems to have accepted a narrow interpretation of the notion of trademark owners’ “consent” under Article 7(1) of the Trademark Directive. I also argue that the CJEU seems to have adopted an alarmingly broad interpretation of what can constitute a “legitimate reason” to oppose trademark exhaustion under Article 7(2), especially to protect famous marks and luxury goods against unauthorized trade by third party importers, still within the EEA. This trend, I conclude, is troubling and may negatively impact the principle of free movement of goods within the EU/EEA. Furthermore, it grants trademark owners (primarily the owners of famous marks) an increasingly absolute right to control the distribution of their marked products in the after-sale market—precisely what the principle of trademark exhaustion was designed to prevent—to the detriment of consumers and market competition. 2012-04-01T07:00:00Z text application/pdf https://ink.library.smu.edu.sg/sol_research/2320 https://ink.library.smu.edu.sg/context/sol_research/article/4272/viewcontent/TrademarkExhaustion.pdf http://creativecommons.org/licenses/by-nc-nd/4.0/ Research Collection Yong Pung How School Of Law eng Institutional Knowledge at Singapore Management University Intellectual Property Law
institution Singapore Management University
building SMU Libraries
continent Asia
country Singapore
Singapore
content_provider SMU Libraries
collection InK@SMU
language English
topic Intellectual Property Law
spellingShingle Intellectual Property Law
CALBOLI, Irene
Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)
description Ten years ago, I published an article in the Marquette Intellectual Property Law Review titled “Trademark Exhaustion in the European Union: Community-Wide or International? The Saga Continues.” In that article, I described the development of the principle of trademark exhaustion in the European Union (EU) and analyzed the interplay among trademark protection, trademark territoriality, and the treatment of the parallel importation of gray market products—unauthorized genuine goods imported from foreign countries—under Article 7 of the Trademark Directive (Article 7). In this Essay, I continue to explore, ten years after my 2002 article, the development of the principle of trademark exhaustion in the EU. In particular, I analyze the recent jurisprudence of the CJEU on the application of Article 7 and recount the most relevant trends in the recent CJEU’s decisions in this area. Although the focus of this Essay is primarily descriptive, I offer some critical considerations in the light of recent CJEU’s decisions. I thus argue that in its recent line of cases, the CJEU seems increasingly willing to shrink, de facto, the application of the principle of trademark exhaustion not solely to products imported from outside the EEA, but also to intra-EEA trade. Most notably, I highlight that the CJEU seems to have accepted a narrow interpretation of the notion of trademark owners’ “consent” under Article 7(1) of the Trademark Directive. I also argue that the CJEU seems to have adopted an alarmingly broad interpretation of what can constitute a “legitimate reason” to oppose trademark exhaustion under Article 7(2), especially to protect famous marks and luxury goods against unauthorized trade by third party importers, still within the EEA. This trend, I conclude, is troubling and may negatively impact the principle of free movement of goods within the EU/EEA. Furthermore, it grants trademark owners (primarily the owners of famous marks) an increasingly absolute right to control the distribution of their marked products in the after-sale market—precisely what the principle of trademark exhaustion was designed to prevent—to the detriment of consumers and market competition.
format text
author CALBOLI, Irene
author_facet CALBOLI, Irene
author_sort CALBOLI, Irene
title Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)
title_short Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)
title_full Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)
title_fullStr Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)
title_full_unstemmed Reviewing the (shrinking) principle of trademark exhaustion in the European Union (ten years later)
title_sort reviewing the (shrinking) principle of trademark exhaustion in the european union (ten years later)
publisher Institutional Knowledge at Singapore Management University
publishDate 2012
url https://ink.library.smu.edu.sg/sol_research/2320
https://ink.library.smu.edu.sg/context/sol_research/article/4272/viewcontent/TrademarkExhaustion.pdf
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