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Exhaustion of the trade mark rights in the EU

The proprietor of a community or national trade mark registered in any Member State has limited exercise of his exclusive rights regarding the first commercialisation in the EU of the goods bearing that trade mark.
This is established in community regulations – Regulation (EC) 207/2009 in the case of community trade marks, and Directive 2008/95/EC in the case of national trade marks in Member States – which regulate the exhaustion of trade mark rights by stating that “the trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent”.

The purpose of this provision is to avoid, at one’s discretion, the proprietors opposition to the subsequent commercialisation, in the EU, of goods bearing the trade mark, because this would impinge upon the principle of free trade enshrined in article 30 of the EC Treaty. Exhaustion therefore constitutes a restriction on the exclusive rights of the trade mark proprietor stemming from the first commercialisation of the goods.

It is worth pointing out, however, that the scope of this restriction does not always apply in every case. For exhaustion of the trade mark rights to occur, the first commercialisation of the goods must have taken place:

•Within EU territory, which means that the proprietors trade mark rights are unaffected if the first commercialisation has taken place outside this territory.
•Effectively, because only through the effective sale of the goods is the economic value inherent in the trade mark obtained.
•By the proprietor or with his consent, either express or tacit, in other words, there must be elements or circumstances that prove the proprietors wish to waive his exclusive right to oppose the commercialisation; his mere silence is not valid in this case.
•Without the trade mark or goods bearing the trade mark having been altered or modified substantially once they have been commercialised.
•Without the licensee having breached the terms of the licence contract to which article 8.2 of Directive 2008/95/EC refers.

Although exhaustion of trade mark rights should be applied as a general rule, because it allows the subsequent commercialisation of the goods bearing the trade mark in accordance with free trade conditions, the proprietor should equally be able to control, at all times and in accordance with his pre-eminent rights, the way in which the economic value inherent in the trade mark is obtained. Within this conceptual framework, exhaustion compares the principles governing the community market against the exclusive rights of the trade mark holder as an example of another fundamental principle: respect for industrial and intellectual property.

Carmen Sánchez-Puelles