Parallel Imports in the Light of Copyright and Trade Mark Right National Union of In-house lawyers Spea...
Legal framework The concepts of import and parallel import:- Articles 28, 30, 34, 35, 36, 267, and 288 TFEU; Article ...
Case-law (trade marks) Case-law of the European Court of Justice:- Case 102/77 Hoffmann-La Roche v Centrafarmр 1978;- ...
I. The concepts of import and parallel importPart III TFEU, Free Movement of Goods• Article 28(1) – “The Union shall com...
I. The concepts of import and parallel import• Article 85 of the Customs Act (CA)—Release for importation shall confer u...
I. The concepts of import and parallel import• Article 16 VATA — Importation of goods - Importation of goods shall me...
I. The concepts of import and parallel import• The term ‘parallel import’ is referred to in the case-law of the European...
I. The concepts of import and parallel import Parallel import entails the following mandatory elements: 1. importatio...
I. The concepts of import and parallel import * In the case of importation into a country whose territory is not covere...
I. The concepts of import and parallel import Is there an infringement of intellectual property (IP) rights?• On the on...
I. The concepts of import and parallel import• In countries where legislation differs from EU law, including from Bulgar...
II. Copyright, related rights, and parallel import• Copyright and related rights have territorial application. The right...
II. Copyright, related rights, and parallel import• The scope of copyright in respect of economic rights is defined...
II. Copyright, related rights, and parallel import• The only economic entitlement of the copyright holder that is ter...
II. Copyright, related rights, and parallel import• Article 18а(1) CRRA also applies by analogy to the rights of perform...
II. Copyright, related rights, and parallel import• In the scenario of parallel import of copies of a given work in comm...
III. Trade mark right and parallel import• The exclusive right to a trade mark is conferred to the proprietor by registr...
III. Trade mark right and parallel import• The mark is always granted a registration in connection with the use of speci...
III. Trade mark right and parallel import• The different types of entitlements concerning the exclusive economic right ...
III. Trade mark right and parallel import• ANALYSIS OF ARTICLE 15 TM Law (Exhaustion of Trade Mark Right)The provision...
III. Trade mark right and parallel import Г) the use of the mark in relation to goods placed on the market with the sai...
III. Trade mark right and parallel import• According to §1(24) of the Additional Provisions of the GMOA, ‘placing on the...
III. Trade mark right and parallel import• C-355/96 Silhouette International, 1998- First Council Directive 89/104/EEC...
III. Trade mark right and parallel import• Joined Cases C-414/99 to C-416/99 Zino Davidoff, Levi Strauss, Tesco, 2001...
III. Trade mark right and parallel import- C-59/08 Copad v Christian Dior, 2009(In connection with the application of Ar...
III. Trade mark right and parallel import• C‑ 449/09 canon v. IPN Bulgaria, ruling of October 2010- Article 5 of the D...
III. Trade mark right and parallel import• Interpretative Ruling No. 1 of the Supreme Court of Cassation of 15 June 2009...
III. Trade mark right and parallel import- Judgment No.1436 of Sofia Court of Appeal of 03 August 2011 in the Canon c...
III. Trade mark right and parallel import• The existence of an explicit provision of the TM Law precludes the applicatio...
IV. Trade mark right and repackaging of goods (Concerning the application of Article 15(2)—opposing further use)Collect...
IV. Trade mark right and repackaging of goods- Case 102/77 Hoffmann-La Roche v Centrafarmр 1978 (Court of Justice)- C-...
IV. Trade mark right and repackaging of goods• The Court interpreted the application of Article 36 TEC (TFEU) as meaning...
Thank you for your attention!Contact detailsHeadquarters:Iztok District, 13B Tintyava Str., floor 6,1113 Sofia, BulgariaE-...
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Politov - Parallel Import v.EN

Parallel Imports in the Light of Copyright and Trade Mark Right
Published on: Mar 4, 2016
Source: www.slideshare.net


Transcripts - Politov - Parallel Import v.EN

  • 1. Parallel Imports in the Light of Copyright and Trade Mark Right National Union of In-house lawyers Speaker: Yordan Politov,Sofia, 01 December 2011 AssociatedLawyer PatentAttorney
  • 2. Legal framework The concepts of import and parallel import:- Articles 28, 30, 34, 35, 36, 267, and 288 TFEU; Article 19 TEU;- Article 30 (Non-preferential origin), Article 85 (Importation), 97 (Transit), 104 (Warehousing), and 163 (Exportation) of the Customs Act (CA); § 1(10) and (22) of the Additional Provisions of the CA;- Article 16 (Importation of Goods) of the Value Added tax Act (VATA); Article 161(1), Article 214(1) and §1(76) (Third Country) of the Additional Provisions of the Medicinal Products in Human Medicine Act (MPHMA) Copyright, related rights, and parallel import:- Article 18 (Types of Economic Copyright) of the Copyright and Related Rights Act (CRRA) — see in particular Article 18(2)(11);- Article 18а (Termination of Distribution Right) of the CRRA; Articles 19, 20 and 22а;- Article 76(1)(1) and (4), Article 84, Article 86(1)(1) and (2), Article 90, Article 90а(1)(6) and (9), Article 90c, Article 91(1)(2), Article 93, Article 93d, and Article 93c of the CRRA — concerning related rights. Trade mark right and parallel import:- Article 13 of the Marks and Geographical Indications Act (MGIA – TM Law), transposing Article 5 of Directive 2008/95 (First Council Directive 89/104/EEC) and Article 9 of Regulation 207/2009;- Article 15 of the TM Law, transposing Article 7 of the Directive and Article 13 of the Regulation;- §1(12) (Importation and Exportation of Goods) of the TM Law; and- §1(24) of the Additional Provisions of the Genetically Modified Organisms Act (GMOA) and §1(32) (Marketing) of the Additional Provisions of the Medical Devices Act (MDA).Sofia, 01 December 2011 www.penkov-markov.eu 2Yordan Politov
  • 3. Case-law (trade marks) Case-law of the European Court of Justice:- Case 102/77 Hoffmann-La Roche v Centrafarmр 1978;- C-355/96 Silhouette International, 1998;- Joined Cases C-414/99 to C-416/99 Zino Davidoff, Levi Strauss, Tesco, 2001;- C-59/08 Copad v Christian Dior, 2009;- C‑449/09 Canon v IPN Bulgaria, Order of the Court, October 2010. Case-law of Bulgarian courts:- Interpretative Ruling No. 1 of the Supreme Court of Cassation of 15 June 2009 in Interpretative Case No. 1/2008 of the General Meeting of the Commercial College;- Judgment No.1436 of Sofia Court of Appeal of 03 August 2011 in the Canon case.Sofia, 01 December 2011 www.penkov-markov.eu 3Yordan Politov
  • 4. I. The concepts of import and parallel importPart III TFEU, Free Movement of Goods• Article 28(1) – “The Union shall comprise a customs union which shall cover all trade in goods and which shall involve the prohibition between Member States of customs duties on imports and exports and of all charges having equivalent effect […]”;• Article 30 – “Customs duties on imports and exports and charges having equivalent effect shall be prohibited between Member States. […]”;• Article 34 and Article 35 – “Quantitative restrictions on imports […]” and “Quantitative restrictions on exports, and all measures having equivalent effect, shall be prohibited between Member States.”• Article 36 – “The provisions of Articles 34 and 35 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of […] the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States”.• Article 19 TEU and Article 267 TFEU – “the Court of Justice of the European Union shall have jurisdiction to give preliminary rulings”, interpret EU law and ensure that it is observed.Sofia, 01 December 2011 www.penkov-markov.eu 4Yordan Politov
  • 5. I. The concepts of import and parallel import• Article 85 of the Customs Act (CA)—Release for importation shall confer upon foreign goods the customs status of local goods. Importation shall entail application of commercial policy measures, completion of the formalities laid down in respect of importation of goods, and the levying of the customs duties due.• Article 97(1) CA—The transit procedure shall allow the movement, from one point to another point, within the customs territory of the Republic of Bulgaria of foreign goods, without such goods being subject to import duties.• Article 104(1) CA—The customs warehousing procedure shall allow the placing and storage, in a customs warehouse, of (local or foreign) goods.• Article 163(1) CA—The exportation procedure shall allow local goods to leave the customs territory of the Republic of Bulgaria and shall entail the application of formalities provided for the exportation of goods, including commercial policy measures and, where applicable, export customs duties.• §1 of the Additional Provisions of the CA—It regulates the importation, exportation, transit, and customs warehousing as customs procedures (see sub-paragraph 10) and defines the ‘customs territory of the Republic of Bulgaria’ (see sub-paragraph 22). (Origin of goods: Non-preferential origin)• Article 30(1) CA—Goods originating in a country shall be the goods wholly obtained or produced in that country.Sofia, 01 December 2011 www.penkov-markov.eu 5Yordan Politov
  • 6. I. The concepts of import and parallel import• Article 16 VATA — Importation of goods - Importation of goods shall mean the entry of non-Community goods into the national territory; - Importation of goods shall also include the entry of Community goods into the national territory from third countries or territories that are part of the customs territory of the European Union; - Importation of goods shall also include releasing goods for free circulation following outward processing arrangements. - Any other event that causes customs debt to arise shall also qualify as ‘importation of goods’. - Notwithstanding the above scenarios, when goods—upon their entry into the territory of Bulgaria—are given the status of goods in temporary storage, goods in a free zone or free warehouse, as well as goods in customs warehousing, temporary admission, or external transit, the importation shall be considered completed when the goods cease to be under the relevant customs procedure within the territory of Bulgaria.• § 1(76) of the Additional Provisions of the Medicinal Products in Human Medicine Act (MPHMA) — ‘A third country’ shall be a state that is not a Member State of the European Union (EU) or of another State party to the Agreement on the European Economic Area (EEA).Sofia, 01 December 2011 www.penkov-markov.eu 6Yordan Politov
  • 7. I. The concepts of import and parallel import• The term ‘parallel import’ is referred to in the case-law of the European Court of Justice and of Bulgarian courts in connection with cases involving infringements of intellectual property rights and cases involving iinfringements of competition rules.• Neither EU law, nor Bulgarian legislation provides a legal definition of this term. For example, the MPHMA introduces arrangements for registering parallel importers of medicinal products and for granting authorizations for parallel import of such products, but its Additional Provisions do not contain a definition of ‘parallel import’.• Indications pointing to the existence of some elements of parallel import concerning medicinal products are to be found in Article 214(1) MPHMA — “A medicinal product authorised for use in another Member State may be imported in parallel on the territory of the Republic of Bulgaria […]”. The above means that the law (MPHMA) essentially limits the scenario of parallel import of medicinal products into the Republic of Bulgaria only to imports from countries that are Member States of the EU or EEA States. This conclusion is also confirmed by Article 161(1) MPHMA, which provides that only persons registered as traders who have been granted an import authorization by the BDA may import from third countries into the territory of Bulgaria. Article 1 MPHMA also specifies that it lays down the procedure for import of medicinal products (sub-paragraph 2) and the procedure for parallel import of medicinal products (sub-paragraph 5).Sofia, 01 December 2011 www.penkov-markov.eu 7Yordan Politov
  • 8. I. The concepts of import and parallel import Parallel import entails the following mandatory elements: 1. importation of goods (products, devices) bearing a trade mark or projecting another object of intellectual property (works under the CRRA) with the consent of the proprietor of the right (i.е. original goods); 2. imports are entered by a third party without the consent of the proprietor of the intellectual property right (regardless of whether the importer has a contractual relationship with the proprietor or not); Exporting Proprietor country (producer) Parallel importer Official importer/ Country of distributor importation 3. imports are entered into a territory where official distributors of the same type of goods are operating, with the parallel importer or consignee being a competitor of such distributors, and the goods are typically marketed at lower prices in the country of importation.Sofia, 01 December 2011 www.penkov-markov.eu 8Yordan Politov
  • 9. I. The concepts of import and parallel import * In the case of importation into a country whose territory is not covered by distribution channels (i.е. goods of a given type are not distributed by distributors with the consent of the proprietor), the import is ordinary (i.е. non-parallel). Therefore, general rules shall apply.• The main elements of parallel import include: Importation of original goods; goods Importation of the same type of goods for the same country (EEA territory) in parallel with another person (distributor) who has obtained the consent of the proprietor. No consent of the proprietor (copyright holder) allowing the parallel importer to import given goods into a given country;Sofia, 01 December 2011 www.penkov-markov.eu 9Yordan Politov
  • 10. I. The concepts of import and parallel import Is there an infringement of intellectual property (IP) rights?• On the one hand, when ‘importing’ from third countries (outside of the EEA), the right of the proprietor in the EEA is not exhausted or terminated in respect of the specific imported goods, which constitutes parallel import infringing IP law, because it is concerned with the use of a registered mark, or work, respectively, without the consent of the proprietor/holder.• The non-exhaustion of the trade mark right, or the non-termination of the distribution right over the copies of a given work within a given territory, respectively, means that the proprietor/holder of the right has not materialized—or consented to this effect—the time of “placing the original goods on the market”, or the time of “transferring the ownership over the work”, respectively, for the relevant territory. In this case, parallel import will also have a fourth main element: Non-exhaustion/non-termination of the rights within the territory into which the relevant goods are imported. The issue of whether an infringement exists is iinseparably intertwined with the issue of exhausting/terminating the rights of intellectual property proprietors.Sofia, 01 December 2011 www.penkov-markov.eu 10Yordan Politov
  • 11. I. The concepts of import and parallel import• In countries where legislation differs from EU law, including from Bulgarian Law, another legislative solution is possible. Hence, parallel import does not always constitute an infringement of IP rights—for example, in cases of international exhaustion of the right to a trade mark.• On the other hand, any importation from one EEA State to another—and, more particularly, in respect of the trade mark procedure referred to in §1(12) TM Law (Importation and Exportation of Goods)—via the actual movement of the goods across the border of the Republic of Bulgaria, is a matter of parallel import of goods for which no customs procedure (more precisely, trade within the domestic market) has been activated. In this case, the IP right has been exhausted/terminated, and parallel import will not constitute an infringement.• Parallel imports without customs obligations concerns the so-called ‘intra-Community supply’— intra-Community trade within the EEA territory (between EU-27 and EEA+3: Norway, Iceland and Liechtenstein)—on accounts of the free movement of goods established between these countries.Sofia, 01 December 2011 www.penkov-markov.eu 11Yordan Politov
  • 12. II. Copyright, related rights, and parallel import• Copyright and related rights have territorial application. The rights that the CRRA confers to authors and other persons, in the scope stipulated by this law, have territorial application within the jurisdiction of the Republic of Bulgaria, as well as outside of it, under the relevant international treaties, including: - Berne Convention for the Protection of Literary and Artistic Works of 1886—in 164 countries, subject to reciprocity (national arrangement); - concerning related rights: Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations of 1961—in 91 countries, subject to reciprocity; - TRIPS (Annex of the Marrakesh Agreement, 1994)—in 153 WTO member countries (regarding software and databases; the principle of Most Favoured Nation, and issues related to the exercise of rights).• Copyright arises automatically—at the time of creating the work, presenting it and giving it external external objectivity, in a manner that enables it being perceived. No registrations are required (carrying out administrative procedures and issuing individual administrative acts—the certification title does not exclude rights) in separate countries or by regional organisations.Sofia, 01 December 2011 www.penkov-markov.eu 12Yordan Politov
  • 13. II. Copyright, related rights, and parallel import• The scope of copyright in respect of economic rights is defined in Article 18 CRRA and includes the right of the copyright holder to use the work created by him and to permit its use by other persons (see paragraph 1). Pursuant to paragraph 2, the types of use (entitlements) include: – reproduction; – distribution of the original of the work, or copies thereof, among an unlimited number of persons; – public presentation or performance; – wireless transmission; – transmission and retransmission by wire; – public display of a work of art or a work created by photographic or similar means; – translation of the work into another language; – revision and synchronisation; – implementation of an architectural design by building; – providing access—wireless or by wire—to the work to an unlimited number of persons; – import or export to third countries (outside of the EEA) of copies of the work in commercial quantity, regardless of whether such copies have been manufactured legally or in violation of the reproduction right.Sofia, 01 December 2011 www.penkov-markov.eu 13Yordan Politov
  • 14. II. Copyright, related rights, and parallel import• The only economic entitlement of the copyright holder that is terminated by law is the distribution right concerning the original or copies of the work (see Article 18(2)(2)) as from: - The first sale or other transfer of ownership, within the territory of European Union Member States, of the original or a copy of the work by the author or with the authorisation of the author (see Article 18а(1) CRRA). At this point in time, the right of distribution concerning the original or a copy of the work for the relevant territory (EU) is terminated, with the exception of: - the right to permit further leasing thereof (see Article 18а(1) CRRA); - the right under Article 20 CRRA (Royalty) and Article 22а(2) CRRA (Royalty upon Lending—with some exceptions) (see Article 18а(2) CRRA); - cases of digital transmission in respect of materialized copies of the work made by the beneficiary with the consent of the copyright holder (see Article 18а(3) CRRA).Sofia, 01 December 2011 www.penkov-markov.eu 14Yordan Politov
  • 15. II. Copyright, related rights, and parallel import• Article 18а(1) CRRA also applies by analogy to the rights of performing artists (see Article 84), phonogram producers (see Article 90), film producers (see Article 90c), and radio and television organisations (see Article 93).• Article 76(1)(4), Article 86(1)(2), and Article 90а(1)(9) CRRA also provides— as an individual entitlement under the exclusive economic right—the right of performing artists, producers, and film producers to permit imports and exports to third countries of copies of the recording, performance, or film in commercial quantities, regardless of whether the copies have been produced legally.• In the case of data base makers, their right to control further commercialisation of a database copy is terminated upon the first sale, within the territory of a EU Member State, of a material copy of the database made by the maker or with his consent, for this territory, excluding digital transmissions, and for copies made by the beneficiary.Sofia, 01 December 2011 www.penkov-markov.eu 15Yordan Politov
  • 16. II. Copyright, related rights, and parallel import• In the scenario of parallel import of copies of a given work in commercial quantities, or of the original of the work, made from one EU Member State into another, no infringement of the copyright will exist by inference to Article 18а(1) CRRA, once the ownership of the original/copies of the work is transferred for the first time by the copyright holder or with his consent.• An infringement will always exist in parallel import from third countries or export for third countries of copies of a given work in commercial quantities made without the consent of the copyright holder, by inference to Article 18(2)(2) CRRA, regardless of whether the ownership of the copies has been transferred for the first time by the copyright holder or with his consent.• Because of the specificities of copyright, the distribution right can only be terminated in respect of the original or copy of the work by transfer of ownership thereof. This option is available only when executing transactions within the territory of the EU.• The remaining copyright elements (inter alia, import and export into third countries of copies of the work; public presentation or performance; wireless transmission; transmission by wire) under Article 18 remain unchanged.Sofia, 01 December 2011 www.penkov-markov.eu 16Yordan Politov
  • 17. III. Trade mark right and parallel import• The exclusive right to a trade mark is conferred to the proprietor by registration (see Article 10 TM Law), as a consequence of an administrative procedure and the granting of IАА, unlike copyright.• The trade mark proprietor is holder of the registration and, as such, is registered in the relevant register.• Each registration is valid only for the territory of the issuing country (national mark), or the territory of the regional authority(EU mark). In the case of international mark registration, exclusive rights are valid for the territories of the countries specified in the registration.• Most commonly, one person is the proprietor of multiple mark registrations in different countries. Though more rarely, it is possible for one mark to be owned by different persons registered as holders of the registrations in the different countries.• There is no universal proprietor of the exclusive right to a mark at a global level—a global mark registration is still not designed.• The exclusive trade mark right is valid in respect of diligent third persons as from the publication date of the registration; in respect of non-diligent persons, validity starts from the date of submitting the application for registration.Sofia, 01 December 2011 www.penkov-markov.eu 17Yordan Politov
  • 18. III. Trade mark right and parallel import• The mark is always granted a registration in connection with the use of specific goods and/or services, which are grouped in classes according to the International Classification of Goods and Services for the Purposes of the Registration of Marks.• The scope of the exclusive right to a registered mark includes the following entitlements of the registered holder of the registration (see Article 13(1) TM Law): to dispose of the registration; to use the mark for the registered goods/services; and To prohibit any other person from using the mark in the course of trade within the territory of validity of the registration for the registered goods/services.• The registration holder is also entitled to prohibit any other person from using, in the course of trade, any sign which is similar to the holder’s mark, in relation to goods/services which are identical with, or similar to, those for which that trade mark was registered, if such use may cause confusion on the part of the public and lead to associating that similar sign with the mark.• If the registered mark is well-known, its registration holder may also prohibit the use of the mark, or any sign similar to it, in relation to goods/services which are not identical with, or similar to, those for which that trade mark was registered.Sofia, 01 December 2011 www.penkov-markov.eu 18Yordan Politov
  • 19. III. Trade mark right and parallel import• The different types of entitlements concerning the exclusive economic right when using, in the course of trade, the mark or a sign similar to it are non- exhaustively listed in Article 13(2) TM Law: 1. affixing the sign to goods or to their packaging; 2. offering (for sale) of the goods bearing that sign; or placing such goods on the market; or storing such goods for the aforementioned purposes, as well as offering or delivering services under that sign; 3. importing or exporting goods under that sign; 4. using the sign in business papers and in advertisements.• The trade mark legislation lays down two main categories of exceptions when one or more of the above types of use are at hand:- under Article 14 TM Law (Limitation of Trade Mark Right), and- under Article 15 TM Law (Exhaustion of Trade Mark Right). The materialization of any of these exceptions is a factual element of the assessment of the trade mark infringement under Article73(1) read in conjunction with Article 13(2) TM Law.Sofia, 01 December 2011 www.penkov-markov.eu 19Yordan Politov
  • 20. III. Trade mark right and parallel import• ANALYSIS OF ARTICLE 15 TM Law (Exhaustion of Trade Mark Right)The provision is the following:(4) The trade mark proprietor may not prohibit other parties from using that mark in relation to goods that are placed—bearing his mark—on the market within the territory of EU Member States or the EEA, respectively, by the proprietor or with his consent,• Except for cases where legitimate reasons exist for the proprietor to oppose further commercialisation of those goods and especially where the condition of the goods is changed or impaired after they have been put on the market.• For the purposes of the analysis, we should first delve into the scope of the principle of exhaustion introduced in paragraph 1: The trade mark proprietor may not prohibit: А) the use of the mark, but not the use of a sign similar to it; B) the use of the mark only in relation to goods, but not in relation to services; C) the use of the mark only in relation to goods placed on the market within the EU/EEA territory;Sofia, 01 December 2011 www.penkov-markov.eu 20Yordan Politov
  • 21. III. Trade mark right and parallel import Г) the use of the mark in relation to goods placed on the market with the said mark by him or with his consent (i.е. it is the proprietor who affixed the mark to the goods, or gave his consent to this effect, and who placed the goods on the market, or gave his consent to this effect). The above enables the following conclusions:- Article 15 TM Law is applicable only in respect of original goods. Unauthorized affixing of the mark to the goods or their packaging constitutes an infringement.- Unauthorized offering or delivery of services under the mark is also necessarily an infringement.- Unauthorized use of the mark in business papers and advertisements is an infringement.- An exclusive trade mark right conferred by the registration is exhaustible in terms of the possibility for the proprietor to oppose further commercialisation or storing for sale purposes, as well as importation or exportation of original goods within the EU/EEA market (exhaustion territory), after their first placing into circulation on this market by the proprietor himself or with his consent.Sofia, 01 December 2011 www.penkov-markov.eu 21Yordan Politov
  • 22. III. Trade mark right and parallel import• According to §1(24) of the Additional Provisions of the GMOA, ‘placing on the market’ means making a product available—whether free of charge or in return for payment—for the first time, whereupon the product proceeds from the stage of production or import to the stage of distribution and/or use.• The exhaustion of a trade mark right always has the stipulated territorial application—under a national, regional, or international procedure.• It is the territorial right to a trade mark applicable to the territory of the relevant sovereignty that is exhaustible.• In the case of non-exhaustion of the territorial right within the EU, or the relevant State, an infringement exists when importing original goods, offering them for sale, or storing them for the aforementioned purposes within the EU, or the relevant State.• The trade mark provisions in the TM Law are in line with Directive 89/104 (now codified by Directive 2008/95) to approximate the laws of the Member States relating to trade marks.• In particular, Article 5 of the Directive is transposed in Article 13 TM Law, and Article 7 of the Directive is transposed in Article 15 TM Law (corresponding to Articles 9 and 13 of Regulation 207/2009).• In this regard, the European Court of Justice has extensive case-law, which should be given special attention.Sofia, 01 December 2011 www.penkov-markov.eu 22Yordan Politov
  • 23. III. Trade mark right and parallel import• C-355/96 Silhouette International, 1998- First Council Directive 89/104/EEC (Directive 2008/95) to approximate the laws of the Member States relating to trade marks introduces a unified arrangement for regional exhaustion for the territory of the whole internal market (text with EEA relevance of 1994).- The Directive, in particular Article 7 read in conjunction with Article 5, does not confer to Contracting States the right to choose whether their legislation will stipulate national, regional, or international exhaustion of the trade mark right.- It will be in breach of Article 7 of the Directive for a EU Member State to provide in its domestic law a possibility for international exhaustion of rights, i.е. when releasing goods with the relevant mark on the market within a non-EU/EEA territory. This would give rise to barriers to the free movement of goods and, consequently, to the functioning of the domestic EU market.- Articles 5 and 7 of Directive 89/104 (Directive 2008/95/ЕО) should be interpreted as enshrining a completed unification of rules concerning exclusive trade mark rights which are to serve as grounds as to whether an infringement exists or not.- Article 5(3) of the Directive sets out a non-exhaustive list of the kinds of practice which the proprietor is entitled to prohibit.Sofia, 01 December 2011 www.penkov-markov.eu 23Yordan Politov
  • 24. III. Trade mark right and parallel import• Joined Cases C-414/99 to C-416/99 Zino Davidoff, Levi Strauss, Tesco, 2001- The proprietor’s consent to the placing of goods bearing his trade mark on the market within the European Economic Area is, according to Article 7(1) of the Directive, tantamount to the proprietors renunciation of his exclusive right under Article 5 of the Directive to prevent all third parties from importing such goods into the EEA from third countries.- This consent constitutes the decisive factor in the extinction of the trade mark right.- If the concept of consent were a matter for the national laws of the Member States to legislate and interpret, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned, which is obviously not the objective of the Directive.Sofia, 01 December 2011 www.penkov-markov.eu 24Yordan Politov
  • 25. III. Trade mark right and parallel import- C-59/08 Copad v Christian Dior, 2009(In connection with the application of Article15(2)—exhaustion of the right and effect of the licence agreement; luxury goods.)- Article 8(2) of the Directive is to be interpreted as meaning that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in a licence agreement prohibiting, on grounds of the trade mark’s prestige, sales to discount stores, provided it has been established that that contravention damages the allure and prestigious image which bestows on them an aura of luxury.- Article 7(1) of the Directive is to be interpreted as meaning that a licensee who puts goods bearing a trade mark on the market in disregard of a provision in a licence agreement does so without the consent of the proprietor of the trade mark where it is established that the provision in question is included in those listed in Article 8(2) of that Directive (for example, beyond the period of the license).Sofia, 01 December 2011 www.penkov-markov.eu 25Yordan Politov
  • 26. III. Trade mark right and parallel import• C‑ 449/09 canon v. IPN Bulgaria, ruling of October 2010- Article 5 of the Directive is to be interpreted as meaning that the proprietor of a registered trade mark may oppose the first placing into circulation in the course of trade in the European Economic Area, without his consent, of original goods bearing that mark.- In respect of goods that have been physically brought into the EEA, but are still not released into free circulation, the trade mark proprietor can duly rely on an infringement of his exclusive rights according to Article 5(3)(b) of the Directive (offering for sale of the goods, their placing on the market or warehousing them to this end), where it is established that these goods are subject to sale or sale offer that necessarily requires their placing in the EEA market.Sofia, 01 December 2011 www.penkov-markov.eu 26Yordan Politov
  • 27. III. Trade mark right and parallel import• Interpretative Ruling No. 1 of the Supreme Court of Cassation of 15 June 2009 in Interpretative Case No. 1/2008 of the General Meeting of the Commercial College- Parallel import is importation by a third party of original goods placed on a market covered by the territorial exhaustion of a trade mark without the proprietor’s consent to the importation, i. е. without an agreement with the proprietor and outside of his distribution network. (Parallel drawn with Article 214(1) MPHMA.)- The General Meeting of the Commercial College considers original goods to be those that bear a registered trade mark whose sign has been affixed to the goods with the consent of the trade mark proprietor, regardless of the qualitative characteristics of such goods.- The main indication concerning the sign under Article 13(1)(1)–(3) TM Law which the legislature has introduced as a fact relevant to the infringement under Article73(1) read in conjunction with Article 13(2)(3) TM Law is the lack of consent of the trade mark holder to have the sign affixed to the goods.- In the course of trade with original goods, there is not, in any event, a factual element of the infringement under Article73(1) TM Law. Therefore, the trade mark right holder is not granted the protection under Article76 TM Law. The General Meeting of the Commercial College found that the non-exhaustion of a trade mark right pursuant to Article 15(1) TM Law is a fact irrelevant to the infringement under Article73(1) read in conjunction with Article 13(2)(3) TM Law.Sofia, 01 December 2011 www.penkov-markov.eu 27Yordan Politov
  • 28. III. Trade mark right and parallel import- Judgment No.1436 of Sofia Court of Appeal of 03 August 2011 in the Canon case. Main issue in the case: Is there a trade mark infringement in connection with a question raised as regards parallel import of goods from a third country (China) into the EEA territory, in particular where it was an external transit procedure, and not an importation procedure, that was activated in respect of goods and they are intended for a consignee outside of the EEA territory (Serbia)? Main conclusions of the Sofia Court of Appeal: - The amendment to the TM Law (SG No.73/06—an amending act that regulates the protection of trade marks) introduced a new provision of §1(12) of the Additional Provisions which gives a legal definition of the concept of ‘import’ referred to in Article 13(2)(3) TM Law. This definition provides that importation of goods is the actual movement, across the border of the republic of Bulgaria, of goods bearing a sign identical with, or similar to a registered mark or its imitation, regardless of whether a customs procedure has been activated in respect of such goods. - Therefore, the legislature has given a broader meaning to the concept of ‘import’ by defining it as an actual action in respect of goods bearing trade marks.Sofia, 01 December 2011 www.penkov-markov.eu 28Yordan Politov
  • 29. III. Trade mark right and parallel import• The existence of an explicit provision of the TM Law precludes the application by analogy of the provisions of the Customs Act, which uses the term ‘import’ to denote one of the nine types of customs procedures, applicable to goods crossing the borders of the Republic of Bulgaria.• In this context, an action which places goods under a transit procedure should also be interpreted as an action involving the use of a mark in relation to ‘importation’ of goods under Article 13(2)(3) TM Law, as the former also entails the physical movement of goods across the borders of Bulgaria.• From the analysis of the provisions of the TM Law follows that the legislature does not differentiate between ‘original’ and ‘fake’ goods. (The scenario concerning the entitlement under Article 13(2)(3) TM Law refers to “to prohibit the offering for sale, placing on the market or storing for those purposes” and ”to prohibit importation”.) Consequently, the legislature does not differentiate goods to which the proprietor himself affixed his mark from other goods bearing a sign identical with, or similar to the mark that has been affixed by another person without the proprietor’s consent. (In connection with the principle of exhaustion of exclusive right.)• A sufficient condition for a trade mark infringement to exist is any action under Article 13(2) TM Law—conducted without the consent of the trade mark proprietor—which involved the use of a sign identical with the mark and affixed to goods identical with those for which the mark was registered (see Article 13(1) TM Law).Sofia, 01 December 2011 www.penkov-markov.eu 29Yordan Politov
  • 30. IV. Trade mark right and repackaging of goods (Concerning the application of Article 15(2)—opposing further use)Collectanea of the World Intellectual Property Organization (WIPO): The principle of exclusive trade mark right exhaustion applies only to the right to place on the market given goods bearing the trade mark with the consent of the proprietor. The exclusive right of the proprietor to place his trade mark on goods and their packaging, boxes, labels and other related elements continue to exist. Therefore, the proprietor may oppose actions which infringe upon that exclusive right, in particular repackaging of goods bearing his trade mark, destruction of his trade mark affixed to goods, or modification and subsequent commercialization of his goods under his mark.- Case 102/77 Hoffmann-La Roche v Centrafarmр 1978- C-379/97 Pharmacia & Upjohn v Paranova (repackaging), 1999- Joined Cases C 400/09 and C 207/10 (repackaging), 2011Sofia, 01 December 2011 www.penkov-markov.eu 30Yordan Politov
  • 31. IV. Trade mark right and repackaging of goods- Case 102/77 Hoffmann-La Roche v Centrafarmр 1978 (Court of Justice)- C-379/97 Pharmacia & Upjohn v Paranova (repackaging), 1999 (Court of Justice) Article 36 TEC (TFEU) admits of derogations from the free movement of goods within the EU in the scenario where a parallel importer buys goods placed on the EU market by the proprietor or with his consent, repackages them, and reaffixes the original mark (without the proprietors consent) in order to trade in such goods in another Member State (the country of origin), only to the extent to which such exceptions are justified for the purpose of safeguarding the rights which constitute the specific subject-matter of that exclusive right. (See Case 102/77 Hoffmann-La Roche v Centrafarm [1978] ECR 1139, paragraph 6, and Bristol-Myers Squibb, paragraph 42.) When analyzing the possibility for a proprietor to oppose to a trade mark being affixed after repackaging, the Court found that regard must be had to the essential function of the trade mark, which is to differentiate the product of one person from the products of others and to guarantee the origin of the trade-marked product—and, more particularly, the relation of the goods to the trade mark proprietor—to consumers by enabling them, without any possibility of confusion, to distinguish that product from products which have another origin. This guarantee of origin means that the consumer can be certain that the original condition of the product has not been affected in the case of offering by third parties. (See Hoffmann-La Roche, paragraph 7, and Bristol-Myers Squibb, paragraph 47.)Sofia, 01 December 2011 www.penkov-markov.eu 31Yordan Politov
  • 32. IV. Trade mark right and repackaging of goods• The Court interpreted the application of Article 36 TEC (TFEU) as meaning that the proprietor of a trade mark can invoke his exclusive right to prevent importation and offering by the importer of goods placed on the market in another Member State by the proprietor or with his consent when the importer repackages the goods in utterly different and new packaging and affixes the original mark to it.• The repackaging cannot adversely affect the original condition of the product and should not damage the reputation of the trade mark. (See Hoffmann-La Roche, paragraph 10, Bristol-Myers Squibb, paragraph 49, and Case C-349/95 Loendersloot v Ballantine [1997] ECR I-6227, paragraph 29.)• The possibility for a proprietor to oppose the commercial use of goods bearing his mark should be limited to an extent which will not result in market segmentation. In particular, the proprietor cannot prohibit a parallel importer importing from one EU Member State to another from repackaging which is necessary in order to comply with the local requirements concerning the use of the goods.Sofia, 01 December 2011 www.penkov-markov.eu 32Yordan Politov
  • 33. Thank you for your attention!Contact detailsHeadquarters:Iztok District, 13B Tintyava Str., floor 6,1113 Sofia, BulgariaE-mail: yordan.politov@penkov-markov.euTel.: + 359-2-971-3935Fax: + 359-2-971-1191София, 01.12.2011 www.penkov-markov.eu 33Йордан Политов

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