THE SCOPE OF CONSENT IN ARTICLE 7(1) OF THE TRADE MARKS DIRECTIVE

Abstract

When does a proprietor of a trade mark consent to goods bearing that mark being placed on the market in the EEA? Article 7(1) of the Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Members States relating to trade marks [1989] O.J. L040/1 raises this question, the answer to which is critical since consent will “exhaust” the proprietor’s trade mark rights in respect of those goods, subject to the operation of Article 7(2). In Silhouette International Schmiedt GmbH & Co. KG v. Hartlauer Handelsgesellschaft mbH [1998] E.T.M.R. 539 the ECJ held that Article 7(1) does not support international exhaustion: this is where trade mark rights cannot be used to prevent imports into the EEA of goods placed on the market anywhere in the world under the trade mark. In Zino Davidoff v. A & G Imports Ltd. [2002] 2 W.L.R. 321 the ECJ gave a preliminary ruling on the interpretation of “consent” in Article 7(1). A broad or uncertain interpretation of consent to the marketing of goods in the EEA would have undermined the rule against international exhaustion established in Silhouette. The ECJ in Davidoff opted for a narrow and well-defined interpretation of “consent” within Article 7(1).