Judgment of the Court of Justice of 18 January 2024, Hewlett Packard (C-367/21)
Acts
This judgment stems from a request for a preliminary ruling submitted by the Polish courts to the CJEU concerning the interpretation and scope of Article 13.1 of the Regulation (EC) No. 207/2009 on the Community trademark (current art. 15.1 of Regulation 2017 / 1001 on the MUE (“RMUE”)) in relation to Articles 34 and 36 TFEU.
The facts of the case were as follows:
Hewlett Packard Development Company LP (“Hewlett Packard”) holds two trademarks for the HP brand. Hewlett Packard markets computer equipment products under these brands through authorized representatives who agree not to sell them, except to end users, to persons outside their distribution network. Furthermore, these authorized representatives are required to purchase these products exclusively from other authorized representatives or from Hewlett Packard itself. HP products do not include any marking system that, by itself, allows a determination of whether or not a product is intended for the European Economic Area (EEA) market.
Senetic, SA (“Senetic”) is engaged in the distribution of computer equipment. Senetic introduced products designated with HP MUEs into Poland. It purchased these products from vendors established in the EEA, other than official distributors of Hewlett Packard products, after receiving assurances from these vendors that marketing such products in the EEA did not infringe Hewlett Packard's exclusive rights. Furthermore, Senetic unsuccessfully requested confirmation from Hewlett Packard's authorized representatives that these products could be marketed in the EEA without infringing Hewlett Packard's exclusive rights.
Hewlett Packard filed a trademark infringement action against Senetic in Polish courts to stop Senetic from selling HP products. In its defense, Senetic argued that it had exhausted the rights granted by the plaintiff's trademark applications, claiming that HP products had previously been marketed in the EEA by Hewlett Packard or with Hewlett Packard's consent.
The Polish court of first instance decided to suspend the proceedings and refer two preliminary questions to the CJEU concerning the interpretation of Article 15.1 of the EMR.
pronouncements
The CJEU only examines the second preliminary question in its judgment. This question asks the CJEU whether, in circumstances such as those of the main proceedings, the burden of proof regarding the exhaustion of rights conferred by the MUEs can fall exclusively on the defendant.
In its response, the CJEU points out, as a starting point, that neither the RMEU nor the Directive 2004/48 They regulate the issue of the burden of proof regarding the exhaustion of trademark rights. This is a matter that, in principle, is governed by national law. However, the CJEU adds that national procedures for administering and assessing proof of exhaustion of trademark rights must respect the requirements arising from the principle of free movement of goods and, therefore, must be modified when they could allow the trademark holder to compartmentalize national markets.
This leads the CJEU to conclude that, in circumstances such as those in this case, it will be possible to modify the rules of evidence. That is, when, on the one hand, the products originating from parallel:
- do not bear any markings that allow third parties to identify the market in which they are intended to be marketed;
- are distributed through a selective distribution network whose members can only resell them to other members of that network or to end users; and
- were acquired by the defendant in the EU/EEA after obtaining from the sellers the guarantee that they could be legally marketed in that area,
And, on the other hand, the trademark holder refused to carry out the verification of the legality of the products in question at the request of the purchaser (the defendant), and the defendant's suppliers were unwilling to reveal their own sources of supply.
Specifically, in these circumstances, the burden of proof must be distributed as follows:
- It is the responsibility of the trademark holder to prove that they have carried out or authorized the first placing of the products in question into circulation outside the EU/EEA;
- And if this is proven, it is up to the defendant to demonstrate that those same copies were subsequently imported into the EEA by the trademark holder or with their consent.
Comment
The judgment in question is relevant because it modifies the current rules on evidence (see case Van Doren + Q (C-244 / 00)) to balance the interests of trademark holders and importers parallelists legitimate.
However, the modification of this regime is not total since the reversal of the burden of proof proposed by the CJEU is only intended to operate with regard to the proof of the non-community origin of the product from parallel production (which under the new doctrine would correspond to the trademark holder); but only within the framework of the factual circumstances described above (see paragraphs 61 and 67 of the judgment).
Enrique ArmijoPartner in the Legal Department of ELZABURU.
