Editor's note: The plaintiff and the defendant sign a distribution contract, Authorizes Defendant to distribute Plaintiff exclusively several items marked "BREEZAIR" and "ICON" Branded goods. Upon termination of the said exclusive distribution contract, defendant (dealer) Disregarding the termination of the term of use of the trademark and the plaintiff (Trademark owner) Notice the fact of discontinuing the use of the trademark, Continued use of trademark. After the trademark owner files a lawsuit, Why did the court of first instance reject it? Look down together!

[background] The plaintiff owns two EU trademarks: "BREEZAIR" and "ICON" , Specified for use on heating and cooling equipment. The plaintiff and the defendant sign a distribution contract, Authorizes Defendant to distribute Plaintiff exclusively several items marked "BREEZAIR" and "ICON" Branded goods. Upon termination of the said exclusive distribution contract, defendant (dealer) Disregarding the termination of the term of use of the trademark and the plaintiff (Trademark owner) Notice the fact of discontinuing the use of the trademark, Continued use of trademark "BREEZAIR" and "ICON" . Plaintiff alleges that Defendant's continued use of the trademark in question is not solely for the purpose of selling the remaining Plaintiff merchandise in its inventory, And use the name recognition of the plaintiff's trademark to attract customers, When the customer asked the plaintiff about the goods, To promote the defendant's own similar products (For example, label "BIOCOOL" Evaporative cooler, etc) . Therefore, "BREEZAIR" and "ICON" The owner of the trademark filed suit, The defendant was found to have violated the foregoing conduct "Eu trade mark regulation" The first 9 article 2 Paragraph and "Spanish unfair competition law" The first 4 Article related "Principle of good faith" Stipulation of, It infringes the plaintiff's trademark right and constitutes unfair competition. The court of first instance rejected all the plaintiff's claims. The reason is that: about "Trademark use behavior" . Whereas the goods marked Plaintiff's trademark used by Defendant for sale are the owners of the trademark (plaintiff) European Economic area (European Economic Area) aftermarket, Lawfully obtained by the defendant, Therefore, The plaintiff's trademark rights to the goods have been exhausted. Plaintiffs point to former dealers (defendant) right "BREEZAIR" and "ICON" The trademark shall be used for publicity, To attract customers to the defendant's own products, composition "Eu trade mark regulation" The first 13 article 2 An exception to the exhaustion of trademark rights principle. The judge of first instance held that, Because the defendant's use of the above behavior did not dilute the plaintiff's trademark or improper use of the plaintiff's trademark reputation, Therefore, it does not constitute the plaintiff's claim "Exceptional case" . about "Acts of unfair competition" . The judge of first instance held that, Because the defendant actually provided the plaintiff's goods to the consumer, Therefore, it uses the plaintiff's trademark to advertise, At the same time to provide consumers with their own goods (Marked with "BIOCOOL" trademark) act, Will not damage the plaintiff's trademark image, Nor beyond the duty of reasonable care. The plaintiff refused to accept the judgment of first instance, Lodge an appeal. The plaintiff mentioned in the appeal, for "Trademark use behavior" , Quote from the judgment of first instance "Exhaustion of trademark rights principle" Stipulation of, It is an error in the application of law. There are two reasons: First of all, The defendant failed to prove that the Plaintiff's merchandise in question in its advertising campaign was still in stock, Therefore do not conform to "Exhaustion of trademark rights" request; secondly, In any case, Such use of the trademark by the defendant, Business activities that can hardly be called honest management. for "Acts of unfair competition" , The plaintiff argues that the law was wrongly applied in the first instance, Because the tort was not found by the court of first instance "Business behavior with consumers" , but "The behavior of businessmen" .

[result] Court of Appeal, Alicante (Eu trademark court) Dismiss all petitioner's appeals, The reason is that: about "Trademark use behavior" . First of all, appellee (Defendant of first instance) It has been shown that in the advertising of Plaintiff's goods, The above goods are actually in stock. Therefore, Have satisfied "Exhaustion of trademark rights principle" Objective requirement. secondly, "Principle of exhaustion of rights" Shall not be changed by contract or negotiation. again, "Eu trade mark regulation" The first 12 Article provision, The act of using the trademark shall be in conformity with "The principle of business honesty and credit" . Therefore, "Fair use of a trademark" Do not belong to "Eu trade mark regulation" The first 13 article 2 Paragraph precludes the application of the principle of exhaustion of rights "Lawful cause" . "Fair use of a trademark" , Include only "Eu trade mark regulation" The first 12 Article explicitly enumerates the circumstances: If using name, address, Descriptive words, And the use of third-party trademarks related to parts or spare parts, etc. In addition, The court of appeal held that, The malicious use of a trademark by the appellee in advertising, Which does not preclude the application of the principle of exhaustion of rights "Lawful cause" , The reason is that the above use behavior also belongs to the use of the trademark right after exhaustion. about "Acts of unfair competition" . First of all, The appeals court relied on what Spain's Supreme Court had established in previous decisions "Principle of complementarity" , Examine the compatibility of trademark acts and acts of unfair competition. "Principle of complementarity" Refers to, Only if an act is an infringement under the law against unfair competition, And intellectual property law does not regulate or punish the behavior, As a supplement, The law against unfair competition can be applied to regulate this behavior. The court of appeal held that, The anti-unfair competition Law may be applied in this case. The reason lies in: The act of using the trademark of a third party in a manner permitted by the Trademark Law for the purpose of promoting and selling its own products, Objectively, it is related to the Law against unfair competition "Good faith" Scope of specification, Therefore belong to "Spanish law against unfair competition" The first 4 canonical "Clearly related to marketing activities" The problem of, This kind of behavior is not regulated in trademark legislation. Appellate finding, The appellee's sued business activities do not constitute "Spanish law against unfair competition" The first 4 The general provisions of this article prohibit any objective breach of good faith. Because a company (It is authorized to use and publicize the trademarks of third parties) It is a legitimate business strategy to provide one's own goods while promoting the third party's trademark goods, From the litigant parties products and related circumstances, This was not an improper use of a third person's reputation, Nor does it cause consumers to misidentify the origin of the goods.

[comment] Two things stand out in this decision. first, expanded "Lawful cause" The scope of. "Eu trade mark regulation" The first 13 article 2 Subsection expressly provides for confrontation "Exhaustion of trademark rights principle" the "Lawful cause" is "After the goods are put on the market, The nature of its products has changed or been damaged" . And this ruling holds that, After the goods are put on the market, Subsequent market activities of the goods by a third party other than the trademark owner may lead to confusion about the source of the goods, Improper use or damage to the reputation and fame of the trademark, Also constitute control 13 article 2 subparagraph "Lawful cause" . second, Confirmation of judgment, Use of trademarks that do not violate the Trademark Law, Can reference "Spanish law against unfair competition" The general terms are regulated—— namely "Competition activities that objectively violate the principle of good faith are prohibited" . but, The judgment in this case makes a restrictive analysis of both of the above issues. In this case, The same principles apply to trademark use and unfair competition: namely, Should help free competition in Europe's single market, Avoid operators based on exclusive rights to artificially divide the market or undue restrictions on competitors' free commercial activities. Free competition has its limits, For the infringement of proprietary rights or violate the rules of fair and honest competition of specific business behavior, Should be prohibited. But in this case, the court found that the defendant was using the plaintiff's trademark to advertise, The act of offering the plaintiff's goods to a consumer at the same time as the defendant's own goods, It does not violate the provisions of the Trademark Law and the Anti-unfair Competition Law.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights