Trademark Exhaustion Research Articles

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.

Aktuelni problemi iscrpljenja žiga u stranoj sudskoj praksi

The author analyzes the principle of trademark exhaustion in the European Union. The institution of trademark exhaustion is a form of legal limitation of the subjective right of the trademark owner. EU member states have a national trademark protection system. On the other hand, a supranational trademark protection system was established in the EU, through which, among other things, there was introduced a system of regional trademark exhaustion. In the paper, the Institute of trademark exhaustion will be analyzed through the latest practice of the EU Court of Justice. Namely, when the owner of the trademark or a third party, with his consent, puts the goods marked with the trademark on the market in the European Economic Area, the exhaustion of the trademark occurs. This means that the owner of the trademark cannot prevent the further circulation of these goods. However, it often happens that the goods are purchased in one country, where the goods were first sold by the trademark owner, and then being sold in another country. According to the significant differences in the prices of medical and pharmaceutical products in different EU countries, there is a significant market for the so-called parallel import of such goods. Recent case law of the Court of Justice of the European Union has clarified how the provisions relating to the packaging and repackaging of medicinal products should be interpreted and applied in the context of parallel trade in pharmaceutical products within the EU.

Политическая стратегия России в выборе режима исчерпания права на товарный знак

Introduction: the institute of trademark exhaustion in Russia is transformed three times: from international to national and at present in force regional regime on the territory ofthe Eurasian Economic Union. The initiatives of the last ten years of parallel import legalization don’t result in stable flexible regime of trademark exhaustion in Russia. Objectives: to consider the Russian political strategy of every stage of trademark exhaustion changing taking into account priorities of all the interested groups and determine the most balance approach to trademark exhaustion regime. Methods: neoinstitutional approach, comparative-law method, methods of political modeling and forecasting. Results: formulating a sustainable strategy of trademark exhaustion in Russia is complicated by confrontation between two groups political actors of national and supranational levels with competing interests about legalization or prohibition of parallel import. Conclusions: institutional conditions surrounding the issue of trademark exhaustion currently allow to make possible a strategy of local experimentation and legalize parallel import of separate groups goods in a separate territory of determine Russian region.

Rethinking Trade Mark Exhaustion: Does Australia’s New Defence Offer a Way Forward?

Despite the strong economic case in favour of liberal trade mark exhaustion rules, both the parallel importation of legitimate goods, and the sale of second-hand goods, have come to be treated with a high degree of scepticism in legislatures and courts around the world. Given how restrictive most jurisdictions’ laws on trade mark exhaustion have become, it is important to consider whether there are other ways WTO Members could approach exhaustion and, if so, what a model for reform might look like. In this regard, it is highly instructive to look at recent developments in Australia. With the introduction of a new defence to infringement contained in section 122A of the Trade Marks Act of 1995, which came into effect on August 25, 2018, Australia now has the most liberal trade mark exhaustion regime of any major jurisdiction. In summary, the new defence applies if the parallel importer or reseller reasonably believed that the mark was originally applied to the goods by or with the consent of the owner, or a range of other parties, with “consent” being defined in exceptionally broad terms. In a reversal of the typical onus of proof, if an importer/reseller forms such a reasonable belief it will not be liable for infringement unless it persists in its conduct after information as to the lack of consent to application of the mark is brought to its attention. And, crucially, the defence does not in any way turn on whether the imported/resold goods have been altered, repackaged or relabelled, or if there are material quality differences between the imported/resold goods and those supplied locally by or under the licence of the mark owner. This paper provides context for the new Australian exhaustion laws, showing that Australia, over the course of the twentieth century, had recognised the benefits of facilitating the parallel importation of legitimate goods, but that since the mid-1990s an overly restrictive approach had come to be taken by the legislature and courts. It then examines the liberal new section 122A defence in detail, analysing its scope by reference to the more restrictive pre-2018 case law, and showing how it operates more favourably to importers and retailers than any other set of exhaustion rules in the world. It then uses the recent Australian reforms as a springboard for a broader reconsideration of whether trade mark exhaustion rules in other jurisdictions should be liberalised, showing that the Australian approach is underpinned by different ways of thinking about exhaustion—namely, as to the proper scope of registered owners’ rights, as to what sort of conduct by importers and owners we want to incentivise, and as to how risk should be allocated between such parties.

Trade mark exhaustion and global brands: the Schweppes judgment

Trade mark exhaustion and global brands: the Schweppes judgment

The Concepts of Trademark Exhaustion and Parallel Imports: A Comparative Analysis between the EU and the USA

AbstractThe article intends to analyze the closely correlated concepts of trademark exhaustion and parallel imports. The growing importance of these concepts in the current world, especially in the European Union, makes it an interesting research topic, even though the concepts are complicated due to their nature and different actors involved. The authors use comparative approach, concentrating on two world leaders in the field, in order to discover what is the approach of the EU as well as the approach of the USA to the concepts of trademark exhaustion and parallel imports, what are the benefits and weaknesses of these approaches, and analyze why these markets have arrived at certain conclusions.

A Case Study on Trademark Exhaustion under the Trademark Directive

A Case Study on Trademark Exhaustion under the Trademark Directive

The European Union’s Trade Mark Exhaustion Regime

The European Union’s Trade Mark Exhaustion Regime