The proprietor of a trade mark may not prevent the marketing of genuine goods bearing that trade mark if those goods have been placed on the market by the proprietor themselves or with their consent. In such cases, their trade mark rights are exhausted and the goods in question must be allowed to circulate freely within the EU, with one exception…
There is only one exception to the principle of exhaustion of trade mark rights: where the trade mark proprietor puts forward ‘legitimate grounds’ to oppose such free marketing, for example where the goods have been repackaged in a manner that gives cause for criticism. This was the argument put forward by the claimant in this case…
Background: Companies within the same French group, Republic Technologies International, which own various “OCB” brands, have brought proceedings for infringement, and in the alternative for unfair competition, the companies Pera (operator of an Intermarché-branded retail outlet) and Distri-Concept, on the grounds that they have marketed packs combining OCB rolling paper booklets with products from the BEUZ and BELFLAM brands, presented in transparent plastic pouches with self-adhesive closures.
Pera invokes the doctrine of exhaustion of trade mark rights on the grounds that the OCB goods are genuine products, placed on the market by the claimants or with their consent, and adds that they cannot rely on a “legitimate reason” to oppose such marketing.
The court ruled in its favour and dismissed the action brought by the owners of the OCB trade marks, which was based precisely on the existence of such a legitimate …
