Faster codification avoids protracted discussions about trademark law

Jan Smolders is a lawyer with Dohmen advocaten. In this guest blog he gives us his view on current trademark law. “Legislation surrounding IP (intellectual property) is undergoing change globally. Improvements can always be made in IP in my opinion. One of those is codifying case law in legislation more rapidly.” 

Ultimately, at some point it becomes clear from decisions and judgements which sections of the law (treaty articles) are unclear and thus need to be interpreted and improved: for instance, if the Court in Arnhem arrives at a different interpretation to that of the Court in Den Bosch, and the matter ultimately arrives at the Supreme Court. Good examples of this are proceedings with a Van Doren/Lifestyle-type defence. I will first explain what that is and then where it goes ‘wrong’, in my opinion, as different Courts handle things differently.  

Van Doren/Lifestyle 

Van Doren/Lifestyle was a case in 2003 before the European Court of Justice that resulted in the following outcome: if a trademark owner in the EU sells a product, he cannot complain afterwards if that product is further processed in other EU countries. He has then ‘exhausted’ his right of opposition. If the trademark owner believes the products have been illegally imported from outside the EU, he can then indeed proceed by serving a writ of summons. The trader must then demonstrate that the products have been brought on to the market by or with the approval of the trademark owner in the EU. The trader must then explain where he bought the goods and show a ‘paper trail’ leading to the origin. There is one exception to this: if there is a risk that the trademark owner will prohibit his chain from supplying to other EU countries, that is then a threat to the free market, according to the judge in Van Doren/Lifestyle. The person the trader has designated will simply no longer be supplied by the trademark owner. If there is that risk, it is first for the trademark owner to prove that the products have their origin outside of the EU.   

Converse/Aspo 

A good example of a case that invoked a Van Doren/Lifestyle-type defence was a ruling from the Court in Den Bosch in 2014 (Converse/Aspo). In Van Doren/Lifestyle the European Court of Justice stated that the threat to the free market arises mostly with exclusive distribution systems (one sole trader per country). In such a case, the Van Doren/Lifestyle-type defence (which implies a reversal of the burden of proof because it considers it is the trademark owner who must prove that the products originate from outside of the EU) would therefore have to succeed. However, the Court in Den Bosch found the sole fact that there is an exclusive distribution system insufficient to reverse the burden of proof. Point 9.7 of that decision shows what an extremely complicated pattern of proof results from this position adopted by the Den Bosch Court. 

Silk Cosmetics/Notino and Curator/Converse 

In Silk Cosmetics/Notino (2021) the Court in The Hague (points 6.9-6.10) handles it differently. The Court in The Hague stated (paraphrased): exclusive distribution system = risk of market foreclosure = reversal of burden of proof. I am unaware of whether an appeal was lodged in this case, but a comparable case (Curator/Converse) is currently open before the Supreme Court. The Supreme Court advisor states, paraphrased (2.25 last sentence): “no, you can’t put an ‘equals’ sign between exclusive distribution system and market foreclosure”.  

Current trademark law

In short, almost twenty years after Van Doren/Lifestyle, this type of issue still awaits clarification. It often makes things interesting, certainly, but more difficult to explain also. That can be resolved in part by the legislative authorities amending the law quicker so as to eliminate expensive and protracted discussions on interpretation. It means the rules become easier and can be applied quicker, which is also beneficial for rights holders.

The guest blogs, which were published earlier as part of BOIP50 were well received. Therefore, we will continue to publish guest blogs. Would you also like to write a guest blog? Please send us an email to content@boip.int.

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