[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　1999 years, Cadbury Schweppes The company will include the UK, trademark "SCHWEPPES" Ownership in several member states of the European Union sold to Coca-Cola/Atlantic Industries company, Retained ownership of the trademark in other countries such as Spain.

　　Since the 2001 Year on, After several rounds of mergers and acquisitions, now, trademark "SCHWEPPES" All power within the EU is divided into two parts: Coca-Cola The company owns trademarks in several member countries, including Britain; while Suntory (Schweppes Limited) The company has ownership in several other member states, including Spain.

　　2014 years 5 month, Spanish trademark "SCHWEPPES" Exclusive licensee of——Schweppes, S. A. , Bring an action for infringement, Think that Red Paralela, S. L. and Red Paralela Bcn, S. L. The company sells the label in Spain "SCHWEPPES" The behavior of a commodity, Infringement of its exclusive right to the trademark.

　　Defendant argues, The goods in question were made in Britain, Its manufacturer Coca-Cola The company has registered trademarks in the UK "SCHWEPPES" ownership, Therefore, the principle of exhaustion of trademark rights should be applied (There is a single market within the EU, To ensure the free flow of goods within the single market, Eu law requires that goods be placed on the market in a member state for the first time, The trademark rights attached thereto have been exhausted, The trademark owner shall not prohibit the subsequent sale and circulation of the goods in other member states of the single market. Therefore, The accused maintained that his actions were lawful. The plaintiff argued that the defendant's goods were entering the Spanish market for the first time, Therefore, Its Spanish trademark rights have not been exhausted. The main issue in this case is "The right to free movement of goods in the single market within the EU" with "Multiple parallel countries of the member states registered trademark rights" Conflict between–Translator's note) , They are free to export to Spain, The plaintiff's permission is not required. In addition, The defendants cited violations of competition rules and unfair competition, Counterclaims were filed against the plaintiff and its affiliates. 　　Period of litigation, Barcelona's No. 8 Commercial court decided to suspend the proceedings, Request the European Court of Justice in the circumstances of this case, How to understand "Directive of the European Parliament and of the Council on the harmonization and harmonization of trademark laws in the Member States (The first 2008/95/EC No) " The first 7 (1) article (current "Directive of the European Parliament and of the Council on the harmonisation of the laws of the Member States relating to trademarks (The first 2015/2436 No) " The first 15 (1) article) Relevant provisions, Make a preliminary determination. After the European Court of Justice, Make adjustments C-291/16 adjudication, identification "European Union regulation 2008/95/EC Number instruction" The first 7 (1) Article shall be understood as, In a situation like this one, A holder of the same trademark in several member states, Transfer the ownership of trademarks of some member countries to third parties by means of transfer agreements, If any of the following conditions exist after the Agreement takes effect, The owner shall not be allowed to argue that the title to the mark retained in other Member States has not been exhausted, The above third parties are prohibited from exporting to the country the goods bearing the trademark:

　　- The trademark owner implements the trademark strategy by himself or jointly with the aforesaid third party, actively, Consciously and continuously promote the image and reputation of a single overall trademark, Cause the relevant public to confuse or increase the confused impression of the source of the goods of the trademark; or,

　　- There are economic ties between the trademark owner and the third party mentioned above, By coordinating their business policies or reaching agreements, Jointly control the use of the trademark in the area of dispute, Be able to decide directly or indirectly on the goods using the trademark, And then control the quality of the goods.

　　The court of first instance affirmed after examination, The available evidence is sufficient to establish that the parties in this case have both of the conditions outlined by the European Court of Justice, Judgment to dismiss the suit, The plaintiff was found to have exhausted his trademark rights, Meanwhile, the counterclaim against unfair competition which has not been withdrawn by the defendant is rejected. The plaintiff refused to accept the judgment of first instance, appeal, To support all of the plaintiff's claims.

　　 [conclusion] 　　

After review by the court of second instance, Drew a different conclusion from the court of first instance. In the court of first instance, To prove the implied consent of the trademark owner (Import into Spain) And after an analysis of the premises which have resulted in the exhaustion of his rights, The court of second instance confirmed only two of them: The owner of the trademark mentions that the goods are of British origin; and, Schweppes Limited Company and Coca-Cola Licensing agreements are signed between companies, Allow the latter to produce and sell the former's goods in the Netherlands. Neither is sufficient to find either of the circumstances required by the European Court of Justice——Single overall trademark image, Or there are economic ties.

　　On one hand, There is a legitimate reason why the introduction trademark comes from the UK, Its purpose is to explain the historical origin of the trademark, The current owner of the mark cannot therefore be required not to do so. On the other hand, Even if there is a trademark "SCHWEPPES" License agreement in the Netherlands, Nor can it be inferred that there are economic ties between trademark owners, Common management of trademarks throughout the European Economic Area, Directly or indirectly determine the use of the trademark goods and control their quality.

　　Based on the above analysis, The court granted the appellant's request, The tort was established, Sentence the defendant among other things, Indemnify the plaintiff 29 Ten thousand euros.

　　 [comment]

　　As the Barcelona Court of Appeal interpreted the ECJ ruling, Claim the implied consent of the trademark owner, And as a result, its trademark rights are exhausted, Clear and unequivocal evidence should be provided, Prove the existence of the circumstances required by the European Court of Justice.

　　 [reference]

　　 " [trademark] Exhaustion of parallel trademark rights (C-291/16) "

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights