Parallel Imports & Exhaustion of Rights

Question 1

Planning an Exhaustion of Rights Essay Q

Answer 1

Define terms
Summary of exceptions to exhaustion
Analysis of Exception 1
Analysis of Exception 2
Analysis of Exception 3
Analysis of Exception 4
Conclusion

Question 2

Ruling in Davidoff concerning Implied consent:

Answer 2

Implied Consent cannot be inferred from the fact that:

(i) IPO has not communicated his opposition to goods being on the market.
(ii) Goods carry no warning of their prohibition from market circulation.
(iii) TMO has transferred ownership of product without any contractual reservations.

Question 3

Ruling in Davidoff concerning Exhaustion of Rights:

Answer 3

It is irrelevant if:

(i) Importer is unaware of the proprietor’s objections.
(ii) Authorised retailers and wholesalers have not imposed contractual restrictions.

Question 4

Facts in Davidoff

Answer 4

AEG sought to rely upon Art 5 and 7 of Directive 2008/95 to justify importation of Davidoff’s goods from Non-EEA.

Question 5

Article 5 Directive 2008/95

Answer 5

IPO is entitled to prevent third parties from using - in the course of trade:

(i) Any sign which is identical to his own.
(ii) Where there is a likelihood of confusion.

Question 6

Article 7 (1) Directive 2008/95

Answer 6

Defines Exhaustion of rights

Question 7

Article 7 (2) Directive 2008/95

Answer 7

Exhaustion does not apply where there exists a legitimate reason for opposing further commercialisation of the goods.

Question 8

What superseded Directive 2008/95

Answer 8

Directive 2015/2436

Question 9

Facts of Christian Dior

Answer 9

Evorra had parallel imported Dior’s products into the Netherlands with the intention of selling them. Court was asked whether IPO could oppose commercialisation of goods on the grounds that he believes it may damage his products prestigious image.

Question 10

Ruling in Christian Dior

Answer 10

IPO may not rely on IPRs to restrict importation unless, “it is established that, use of the TM for this purpose would seriously damage reputation of the mark”.

Question 11

Relevant Journal Article for Luxury Goods

Answer 11

‘The Value of Reputation’

Cambridge Law Journal

Jennifer Davis

Question 12

Parallel Imports

Answer 12

The importation of branded goods, from countries where those goods are sold at a lower price.

Question 13

Exhaustion of Rights

Answer 13

IP owner is entitled to put the product into circulation for the first time. After this, the Intellectual Property Rights are exhausted and IP owner cannot object to further dealings with goods.

Question 14

When can obstructing FMOG be justified?

Answer 14

“The Court declared that an obstacle to FMOG may be justified on the grounds of protecting IPRs where:

(i) Such Protection is invoked against a good imported from another member state.
(ii) The good is not patentable
(iii) It is manufactured/imported by third parties without IP owner’s consent.

Merck v Stephar

Question 15

Pharman BV

Answer 15

Parallel import prohibited as IP owner’s consent was not obtained.

Question 16

Rules of Repackaging

Answer 16

Repackaging must be:

a) Necessary and (b) denying it would constitute an ‘artificial partitioning’ of the market. Repackaging must also:

(i) State the repackager and manufacturer info
(ii) Not damage IP owner’s reputation
(iii) Importer gives owner notice and a specimen of the goods.

BMS

Question 17

Key Directive for EU IP law:

Answer 17

Directive 2008/95
- SUPERSEDED BY-
Directive 2015/2436

Question 18

Exceptions to the exhaustion of rights:

Answer 18

(i) Non-EU goods
(ii) Repackaging
(iii) Luxury goods
(iv) Compulsory license.

Question 19

Non-EU goods

Answer 19

Goods bearing a registered TM in non-EEA countries, that are imported into an EEA country can be prohibited by IP owner pursuant to:

Directive 2008/95
Davidoff

Question 20

Luxury goods

Answer 20

An IP owner is entitled to prohibit further importation on the grounds that it may damage his products prestigious image/reputation.

Christian Dior

Question 21

Compulsory License

Answer 21

Lack of such a license or IPO’s consent means that exhaustion does not apply.

Pharman BV
S12 (1) TMA 1994

Question 22

EUs stance on reputation vs trade marks original function

Answer 22

“The EU sought to strike a balance, recognising the value of a TMs reputation by carefully circumscribing the protection it is given beyond its function as an indicator of origin”.

‘The Value of a Reputation’ - Jennifer Davis