Court’s Opinions i.e. CJEU held that Article 7(1) of Directive 2008/95 does not allow the national trademark owner to oppose importation of identical goods with identical trademark.
Two points:
Firstly, when after the assignment of the trademark, he/she continues to enhance the reputation of the trademark, alone or with third parties (which also deepens the confusion among the relevant public).
Secondly, when after the trademark assignment, there are economic connections between the trademark owner and the third party.
Key Take away
While the case is truly rooted in the EU law, especially regarding the free movement rule and intertwined exhaustion of the rights rule, some general remarks can be made.
When administering your IP rights portfolio, regardless of what it is consisted of, one must be very careful.
Very often big commercial enterprises, fiddle with their IP rights, sometimes with detrimental results, in order to optimize tax policies, or expand their businesses to new markets, in consequence of acquiring or selling assets or in relation to many other events that lead to the reshaping of the companies’ structure.
Whether granting a licence, creating a joint venture or commercializing IP rights in any way, some exceptional precautions must be taken, with special consideration to future business plans, i.e. future markets, the degree of control over other companies, which exploit the same trademarks, regional laws, connection to the IP rights and the prevailing parallel import doctrines.
In the case at hand, the shared care of a trademark, a very valuable asset for each party, created a unique situation.
If it hadn’t been the case that the different parties had to together care together about the trademark ”schweppes” yet sold by different entities and cooperate in maintaining it, maybe they could oppose import of the same goods bearing the same trademark but owned by another entity.
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