Exhaustion Of Trademark Rights Research Articles

EXHAUSTION OF TRADEMARK RIGHTS IN KAZAKHSTAN UNDER REGIONAL EXHAUSTION IN THE EURASIAN ECONOMIC UNION

Background: This article aims to examine the trademark rights exhaustion regime for Kazakhstan in the context of a high level of importation of goods and free trade in the Eurasian Economic Union1 (hereinafter “EAEU”). It addresses consumers’ interests and discusses business and intellectual property (hereinafter “IP”) law in relation to the exhaustion regime. It discusses trademark use in Kazakhstan, the prohibition of such use by trademark owners, and the limits of a trademark owner’s right to prohibit such use. While national and regional legislations introduce the regime of regional exhaustion of trademark rights in Kazakhstan, their legal constructions contain gaps and mutually exclusive provisions which create uncertainty for trademark owners and courts, thereby enabling infringement in the form of parallel import. Methods: To achieve the goal of this article, the authors applied a set of methods consisting of content analysis and case study. Particularly, the authors analysed the national and regional legislation applicable in Kazakhstan and examined the existing court practice that reveals certain problems with the exhaustion of trademark rights. Moreover, the article includes a comparative analysis of legislation from the United Kingdom (hereinafter “UK”), the European Union (hereinafter “EU”), and select Eastern European countries. Results: Thus, the paper provides an overview of the currently implemented regime of exhaustion in Kazakhstan and its application in the EAEU and examines the challenges created by uncertainties regarding which rights are being exhausted.

Burden of Proof for the Exhaustion of Trade Mark Rights

Sporttrading Holland B.V., Sport Concept B.V., Ferro Footwear B.V. and Brandustry B.V. v Converse Inc., Kesbo Sport B.V.

The Power of Legal Certainty in the Trademark Exhaustion Principle Governing Parallel Imports

The exhaustion doctrine in intellectual property law refers to the limitation imposed on the rights of owners to enforce their intellectual property rights after a particular point of sale. It creates a framework for determining the legality of parallel imports and helps to balance the interests of intellectual property owners and consumers. This paper presents a comparative study on the trademark exhaustion principle and parallel import between the European Union (EU) and Indonesia. The study investigates the legal framework and the practical application of these concepts in both jurisdictions. This study uses a normative research method and a legal comparative approach to analyze and describe the legal frameworks of different jurisdictions. The research findings indicate that the EU has a well-defined threshold for the exhaustion of trademark rights, which is aligned with the regional exhaustion principle. In contrast, the Indonesian legal system lacks clarity on this principle, which creates confusion and uncertainty for trademark owners and parallel importers. Last, this research also provides insights for policymakers, practitioners, and academics who are interested in the current exhaustion principle and parallel import development.

Parallel counterfeit: the reasons for contradictory judicial practice and the principle of exhaustion of trademark rights

Parallel counterfeit: the reasons for contradictory judicial practice and the principle of exhaustion of trademark rights

The misconstrued notion of consent in EU trade mark law

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.

Exhaustion of trade mark rights and parallel imports in Canada

In most countries, the issue of exhaustion of trade mark rights is legislatively regulated, so that the conditions for the legality of parallel imports of trade-marked goods are quite clear. Canada belongs to the group of countries where no legislative provision for exhaustion of trade mark rights has ever been established and, therefore, the issue of the legality of parallel imports remains ambiguous. This Article reviews Canadian case-law on parallel imports of trade-marked goods. It concludes that Canada adopts a national exhaustion of trade mark rights regime based on two points: first, where physical differences or other sorts of material differences are identified between the goods imported in parallel and the goods distributed by authorized dealers in Canada, it is possible to prevent the parallel importation both under the doctrine of passing off and the Canadian Trade-Marks Act if a risk that the public may erroneously believe that the goods imported in parallel are identical to the ones offered for sale by authorized dealers (likelihood of confusion) is established and, second, if a foreign trade mark is validly assigned to a Canadian entity not related to the foreign manufacturer and the trade mark has become distinctive of the assignee’s goods, parallel imported goods may be banned through an action for trade mark infringement.

Exhaustion of trade mark rights in the Eurasian Economic Union

The contribution is a short description of the exhaustion of trade mark rights provision contained in Section 16 of the Protocol on the Protection and Enforcement of Intellectual Property Rights (Annex 26 to the Eurasian Economic Agreement).

A tale of whisky and sorrow: the Court of Justice says that misapplication of EU rules on exhaustion of trade mark rights is not a breach of public policy

The Court of Justice of the European Union (CJEU) has clarified that a misapplication of the EU provisions on the exhaustion of trade mark rights made in a judgment delivered in one Member State does not constitute an infringement of an EU essential rule; therefore, such a misapplication cannot be considered as a breach of public policy within the meaning of Article 34(1) of EU Regulation 44/2001 upon which to rely to oppose, with the result that the said misapplication cannot be relied upon as ground of opposition to the recognition of that judgment in another Member State where an action for damages was brought for the losses caused by the execution of an unjustified customs seizure of trade-marked products.

Retention of ownership may prevent exhaustion

In its decision of 20 October 2015, the Brussels Court of Appeal had to rule on exhaustion of trade mark rights in a case with respect to printer cartridges. The court ruled that a contractual retention of ownership may bar exhaustion.

Conceptualización y análisis del agotamiento del derecho de marca en la Comunidad Andina de Naciones

El presente artículo busca hacer una breve conceptualización del agotamiento del derecho marca de acuerdo a lo dispuesto por la legislación comunitaria europea, ya que para los bloques económicos suramericanos, en especial para la Comunidad Andina de Naciones (CAN), constituye un referente de cómo se ha logrado equilibrar los intereses de los agentes del mercado fomentando la libre competencia y la libre circulación de mercancías. Por lo tanto, mediante este análisis será posible determinar cuáles son los retos y debates que afrontan los países suramericanos sobre este tema.

International exhaustion of trade marks and parallel imports in the US and the EU: how to achieve symmetry?

The differences in the management of the exhaustion of trade mark rights and, consequently, of parallel importations in the US and the EU cause some asymmetries in the international trade between these two subjects, especially concerning the exchange of grey goods. The article conducts a critical analysis of the origins of this problem and suggests that, given that a general reform of the EU policy is highly unlikely, the Trans-Atlantic Trade and Investment Partnership could be the right instrument for establishing a bilateral sui generis system of parallel importations between the US and the EU. In this system, Europe should apply some American concepts such as the common control doctrine, thus making its internal market more open and competitive.

Agotamiento del derecho marcario

In this article, Javier Duany performs a complete analysis of the exhaustion of trademark rights, the necessary budgets for the application of this right and, in addition indicates what the consequences will be for the proprietor of the trade mark.

Tratamiento del agotamiento del derecho sobre la marca en la comunidad andina

El agotamiento del derecho de marca surge como una institución de raíces jurisprudenciales alemanas encaminada a la limitación del ejercicio del ius prohibendi, es decir a la facultad de uso exclusivo del propietario de una marca. Tal limitación, cobró vigencia en la Comunidad Andina, en términos similares a los europeos, a través de la varias Decisiones, y por lo mismo es pertinente analizar las condiciones por las cuales se instrumenta. Al respecto, factores como la primera comercialización, y el ámbito territorial, son cruciales para entender los efectos del agotamiento. Cabe resaltar adicionalmente que en este esquema, tienen especial relevancia como justificativo de la pertinencia del agotamiento del derecho, la libertad de comercio y consideraciones relativas a la competencia económica.

A Silhouette of Fortress Europe? International Exhaustion of Trade Mark Rights in the EU

A Silhouette of Fortress Europe? International Exhaustion of Trade Mark Rights in the EU