INTA Files Amicus Brief on Exhaustion of Trademark Rights in Parallel Import Cases

New York, New York—January 11, 2022—The International Trademark Association (INTA) filed an amicus brief on January 7, 2022, before the Court of Justice of the European Union (CJEU) in Harman International Industries, Inc v. AB SA (CJEU Case C-175/21), concerning the exhaustion of trademark rights in parallel import cases.

The Regional Court in Warsaw, Poland, referred the case to the CJEU, seeking guidance on how orders from the EU’s national courts in main infringement actions and in temporary measures actions should be formulated in cases of parallel imports when the actions are being upheld, so that the court orders do not overly burden the defendant on the one hand and provide adequate protection to the claimant on the other, while securing a free movement of goods and adequate protection of intellectual property rights. More specifically, the referred question concerns how claimants formulate claims in court actions introduced before a national court.

In its amicus brief, INTA argues that the practice of EU member states’ national courts when ordering remedies provided under the Enforcement Directive in parallel import cases, to describe the goods to which the above remedies apply as “goods which have not been put on the market within the European Economic Area (EEA) by the right holder or with his consent,” does not violate Article 15 (1) of the EU TM Regulation or Article 36 second sentence TFEU (Treaty on the Functioning of the European Union).

Further, INTA submits that to adopt wording that does not stem from the EU legislation—as proposed by the referring court—entails the risk of escaping the CJEU’s uniform interpretation of these provisions and may also result in multiple levels of protection in EU member states.

INTA also argues that the above-mentioned wording does not contribute to a partitioning of markets per se while the referring court’s proposed solution will not contribute to the elimination of any such risk. Moreover, the proposed solution may also result in the trademark owners being de facto unable to enforce their rights.

Finally, while referring to the applicable EU case law on parallel imports and, more specifically, the burden of proof in parallel import cases, INTA argues that the referring court’s proposed solution would shift the burden of proof to the trademark owner, which would contradict existing CJEU case law and would undermine the protection of trademark owner’s rights under the regional EU trademark system. As the latter provides a delicate balance of rights and liabilities in the form of remedies available to both the trademark owner and the importer, the shift in burden of proof would undermine this balance.

About the International Trademark Association (INTA)
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and complementary intellectual property (IP) to foster consumer trust, economic growth, and innovation, and committed to building a better society through brands. Members include nearly 6,500 organizations, representing more than 34,350 individuals (trademark owners, professionals, and academics) from 185 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA, a not-for-profit organization, is headquartered in New York City, with offices in Beijing, Brussels, Santiago, Singapore, and Washington, D.C., and a representative in New Delhi. For more information, visit inta.org.