News | Trade Marks & Design

Tuesday 20th November 2001

The European Court of Justice has today given judgment in the joined cases brought by Zino Davidoff and Levi Strauss against A & G Imports and Tesco respectively.

The full text of the Judgment will not be available until 3pm today but, in the meantime, it is clear that:

(a) in the opinion of the ECJ, the placing of goods on the market outside the EEA by a trade mark proprietor does not exhaust its right to oppose the importation into the EEA of those goods without his consent;

(b) the decisive factor in determining whether or not the trade mark right has been exhausted is consent;

(c) the Court has recognised the need to provide a uniform interpretation of the concept of "consent" for the placing of goods on the market within the EEA Ñ to avoid different protection according to different national legal systems of the Member States;

(d) the trade mark proprietor's consent to the placing of goods on the EEA market must be unequivocally shown, either from an express statement of consent or by an inference that unequivocally demonstrates the proprietor's consent;

(e) it is for the trader alleging consent to prove it, not for the trade mark owner to demonstrate the absence of consent;

(f) the following do not constitute implied consent;

mere silence by the trade mark owner
the absence of contractual reservations when ownership of the goods was transferred
the failure for the trade mark owner to communicate his opposition to marketing within the EEA
the absence from the goods of a notice or warning to prohibit them from being placed on the EEA market.
Ray Black, Head of the IP department, commented: "This decision is a significant success for brand owners and correspondingly a problematic outcome for supermarkets and other traders. It will not in future be possible for consumers to purchase cheap imports from for example the United States or the Far East. It is clear that the European Court has decisively expressed its opinion and, as a result, removed any sense of doubt that may otherwise have existed, in particular by mere re-affirmation of the opinion of the Advocate General. For its clarity alone, the judgment is to be welcomed."

David Rose, IP partner, added: "This decision vindicates the rights of brand owners to determine where, when and by whom their branded products are first marketed in the EU. The clarity of reasoning of the ECJ is particularly welcome, sending as it does a clear message to national courts that local rules cannot take precedence over European law. The day of the grey market importer is over for the time being."