The misconstrued notion of consent in EU trade mark law

Abstract

The notion of consent in EU trade mark law comes up in different scenarios. This article examines it in detail in two circumstances - on the one hand, in the context of the doctrine of exhaustion of trade mark rights, and on the other hand, within the requirement to prove genuine use of a trade mark. The standard for proving consent should ideally vary according to the legal basis and the respective specific circumstances. Nevertheless, this article observes that the notion has been directly imported from the exhaustion doctrine into the proof of use cases without any sound and independent reasoning. The particularly strict standard within the exhaustion of rights doctrine is justified since by virtue of proving consent in these circumstances one does indeed extinguish their exclusive trade mark rights. However, this is not the case when it comes to proving consent within the proof use requirement as there establishing consent has the contrary role – that of safeguarding the trade mark proprietor’s right. The article studies the difference in rationale and the global market impact, which would prompt a more relax standard as far as proof of use cases are concerned.