the matter at hand
Hewlett-Packard is the proprietor of registered marks for HP. It markets computer equipment under this sign through authorized distributors, who are obligated not to sell these goods to non-members of the distribution network, except for end-users. Each of these goods has a serial number, on the basis of which Hewlett-Packard can identify where and to whom the good has been sold. The goods do not carry labels indicating their intended market within the EU.
Senetic distributed into Poland HP computer equipment, purchased from unauthorised HP distributors. Senetic requested authorised HP representatives to confirm that these goods could be marketed in the EU without infringement, but HP refused to provide Senetic with such confirmation.
HP brought an action for infringement in Poland, seeking an order prohibiting Senetic, in general, from importing, exporting, advertising or storing computer equipment designated by those
marks which had not previously been marketed in the EU by itself or with its consent. In its defence, Senetic relied on Article 15 of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, arguing that the trade mark rights were exhausted since the goods in question had previously been put on the market in the EEA by HP or with its consent.
The Sąd Okręgowy w Warszawie (District Court Warsaw, Poland), the referring court, observed that, in the absence of a labelling system for HP's goods, it is very difficult for an independent distributor to identify the market of origin for each of the goods at issue, let alone to provide proof that those goods had been put on the market in the EU by the proprietor of those marks or with its consent. According to the referring court, Senetic theoretically could turn to its suppliers to find out who the operators were upstream in the distribution chain. However, with reference to Van Doren + Q (case C-244/00), the referring court recognized that Senetic was unlikely to succeed in obtaining such information, as suppliers are generally reluctant to disclose their sources of supply. The referring court wondered whether, under these circumstances, the burden of proving the exhaustion of the rights conferred by the EU trade marks at issue could rest solely on the defendant in the infringement proceedings.
the judgment of the ecj
At the time of the preparation of this summary, there was not yet an official translation of this judgment available. The below citations are our translations.
The ECJ notes that the question of burden of proof of exhaustion is not governed by Article 15 of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (paragraph 55). Procedural aspects of the enforcement of intellectual property rights are in principle governed by national law, as harmonised by the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. However, the Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights does not regulate the burden of proof concerning the exhaustion of the right conferred by that mark (paragraph 56).
Against this background, the ECJ considers, with reference to Harman International Industries (case C-175/21), that the “national rules regarding evidence and assessment concerning the exhaustion of the rights associated with a trade mark must, therefore, comply with the requirements stemming from the principle of free movement of goods and must be adapted when they enable the trade mark proprietor to partition national markets, thereby maintaining price differences between member states” (paragraph 59). The ECJ consequently considers that “when the defending party in the infringement proceedings succeeds in demonstrating that there is a real risk of partitioning of national markets if it has to prove itself that the goods have been placed on the market in the EU or in the EEA by the trade mark proprietor or with its consent, it is therefore up to the requested national judicial authority to adjust the burden of proof regarding the exhaustion of the rights conferred by the trade mark” (paragraph 60).
If, under the given circumstances, the burden of proof regarding the exhaustion of the goods were to rest on the defending party in the infringement proceedings, this could enable the trade mark proprietor to prevent parallel imports of goods bearing its mark, even though the resulting restriction of the free movement of goods is not justified by the protection of its trade mark rights (paragraph 63). The defendant in the infringement proceedings would face considerable difficulties in providing this evidence, as the suppliers will understandably be reluctant to reveal their source of supply within the distribution network of the proprietor of the EU trade marks in question. The ECJ considers, with reference to Van Doren + Q (case C-244/00), that “Even if the defending party in the infringement proceedings were to succeed in demonstrating that the goods bearing the relevant trade marks originate from the selective distribution network of the proprietor of those trade marks in the EU or the EEA, this proprietor could furthermore prevent future supplies by the member of its distribution network who has failed to fulfill its contractual obligations” (paragraph 65).
Therefore, under the given circumstances, it is up to the national court to adjust the burden of proof regarding the exhaustion of the EU trade mark rights by obliging the proprietor of those rights that the relevant goods were first put on the market outside the EEA by itself or with its consent. With reference to Van Doren + Q (case C-244/00), the ECJ considers that “If the proprietor succeeds in providing this evidence, it is up to the defendant in the infringement proceedings to proof that those goods were subsequently imported into the EEA by the trade mark proprietor or with its consent” (paragraph 66).