Exhaustion of rights

Anti- Counterfeiting, Czech Republic, EU trade mark law, Exhaustion of rights, Grey online sales, Parallel imports, Trademark

(Havlik Svorcik & Partners)/ /Leave a comment

The Prague High Court as an appellate court issued its judgment in the case of Chanel S.A.S. against Notino s.r.o. (3 Cmo 107/2022-384 dated 28 November 2023) after an almost six-year legal battle with the Czech based online retailer Notino, a major European player in online sales of perfumery and cosmetics. The good news for…

Case law, CJEU, EUTM, Exhaustion of rights, Poland, Trademark

(Osborne Clarke, University of Wrocław)/ /Leave a comment

On 18 January 2024, in case C-367/21 (still no English version) the CJEU ruled again on the exhaustion of EU trade mark rights (following its five rulings of 17 November 2022 including C-175/21 Harman International Industries, C-224/20 Merck Sharp & Dohme, and C‑204/20 Bayer Intellectual Property). The Polish IP Court had referred questions to the…

cosmetic trademarks, Distinctiveness, Exhaustion of rights, Grey online sales, India, Infringement, INTA

, (Khaitan & Co.)/ /1 Comment

The Delhi High Court recently in the case of Coty Germany GmBH v. Xeryus Retail Private Limited (CS(COMM) 1298/2018 & I.A. 8603/2023) permanently restrained two websites, namely  perfumery.co.in and unboxed.in, from selling perfume tester bottles bearing the “Calvin Klein” or “cK” trademarks and imposed INR 1,00,000 (approx. USD 1,200) to be paid to Coty Germany GmBH…

Case law, CJEU, Exhaustion of rights, Grey online sales, Poland, Trademark

(Osborne Clarke, University of Wrocław)/ /Leave a comment

On 13 October 2022 the Court of Justice (CJ) issued a preliminary ruling on corrective measures under the Enforcement Directive 2004/48. In this case (Case C-355/21), Procter & Gamble filed a trademark infringement claim against the Polish company perfumesco.pl. Procter & Gamble produced the perfume under the exclusive licence of the HUGO BOSS word-trademark. In…

Brexit, Exhaustion of rights, Trademark, United Kingdom

(Stobbs IP)/ /1 Comment

As with other aspects of trade mark law, the UK and EU have adopted asymmetrical arrangements about exhaustion post-Brexit. The arrangements result in uneven outcomes on enforcement against parallel imports for UK and EU right-holders. It remains to be seen how the principle of exhaustion of UK rights will develop in the hands of the…

Exhaustion of rights, Germany, Infringement

(Lubberger Lehment )/ /Leave a comment

Parties and Mark The defendant is an Amazon entity. It is responsible for Amazon’s keyword advertising on Google Ads (formerly Adwords). The plaintiff is the exclusive licensee of the trademark BOSS in the perfume and cosmetics segment. One of the perfumes marketed by the plaintiff is “BOSS The Scent”. It ranks among the most successful…

Bundesgerichtshof, Exhaustion of rights, Germany, Infringement action, Supreme Court

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The German Federal Supreme Court recently ruled that the use of only one trademark in search engine advertisements by Amazon was trademark infringing when the underlying link led to a list of offers that included not only products offered under that brand but also those of third parties (Decision of the Federal Supreme Court of…

Case law, cosmetic trademarks, Exhaustion of rights, Germany, Grey online sales, Infringement, Infringement action, Reputation, Trademark

(b/cl IP)/ /Leave a comment

In Germany, the Higher Regional Court Düsseldorf decided that trademark rights were not exhausted in a case where luxury cosmetic products were offered at a German discounter. The Court held that the offer of the luxury cosmetic products at the discounter stores as well as at the discounter’s online-shop would be detrimental for the image…

Exhaustion of rights, Germany, Selective distribution system

(Lubberger Lehment )/ /Leave a comment

In a judgement of April 2018, the Regional Court of Hamburg has ruled on the use of original advertising material by non-authorized dealers and on how trademark law can bypass copyright law (308 O 231/16). The plaintiff manufactures saddle bags and other high quality cycling accessories. The defendant is an online retailer with numerous online…

Domain name, Exhaustion of rights, Spain, Supreme Court

(BomhardIP)/ /1 Comment

In a decision of 22 April 2016, the Spanish Supreme Court has clarified the circumstances in which the commercialization of original luxury products through Internet sale platforms outside a selective distribution system could be relied on by the trademark owner as precluding an exhaustion of the trademark rights. The plaintiffs, various companies of the L’Oréal…