TRADEMARKS | ECJ on the burden of proof for the exhaustion of trademark rights

On 18 January 2024, the EU Court of Justice (ECJ) issued its judgment in case C-367/21 (Hewlett Packard Development Company LP v Senetic S.A) concerning the pivotal question of who (between the trademark owner and the alleged infringer) bears the burden of proof regarding the exhaustion of goods. The ECJ held that the burden of proof cannot fall exclusively on the defendant if doing so would allow the trademark owner to prevent legitimate sales. Indeed, in cases where the trademark goods are sold under a selective distribution system, the defendant would have serious difficulties to prove that the goods have been placed on the market with the consent of the trademark owner, and, even if they could, the trademark owner could then prevent the authorised agent (who violated the distribution agreement by selling to outsiders) from selling exhausted goods to the defendant in the future. Therefore, in such situations, the trademark owner must first prove that the goods have been placed on the market outside the EU; the defendant would then have to prove that the same goods have been imported into the EU with the trademarks owner’s consent.

Newsletter n. 93 – February 2024