Trademark Law - Parallel Imports - article Exceptions to the Exhaustion Rule

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III. Exceptions to the Exhaustion Rule

A. The genuine article
1. Different qualities or contents
2. Repackaging, relabeling and rebranding
3. Warranty issues
B. The issues of ownership and consent
C. Consent for some, consent for all
D. The luxury exception
E. Internet implications

The rule of exhaustion is not without exceptions, as revealed by a closer look at the component parts of the definition of parallel imports. As indicated above, parallel imports are generally defined as genuine goods, that are placed on the market in one country, by the trademark owner or with the owner's consent, and that are then imported for sale into another country without the trademark owner's authorization.

A. The genuine article

The first issue is whether a product is a genuine good. In many cases, even though the products in question may in some respects be genuine, the differences between the parallel imports and the authorized goods are such that the rule favoring parallel imports no longer applies.

1. Different qualities or contents

Where the goods sold under the same trademark are of different qualities for different markets, usually based upon different market preferences or requirements, the reputation and goodwill established in the different markets is related to the particular product destined for that market and the sale of a product specifically intended for another market may constitute infringement. As stated by a leading authority on the issue:

"the function of the trade mark is to identify and distinguish particular goods possessing certain characteristics in composition, ingredients, quality and the like. The owner of the trademark, to satisfy local requirements of the public's taste or preferences or the requirements of a country's health law or other legislation, may not put on sale the identical goods in the two separate countries in which he owns the trademarks. Indeed, the separate goodwill he has acquired in the two countries may have been built up to symbolize products having two different sets of characteristics. In such cases importation of the product of one country into the other may interfere with the very function of the trade mark by creating confusion of the public as to the identity of the goods and by injuring the separate goodwill that the owner has in the latter country." [17]

Thus, PERUGINA chocolates that were manufactured in, and authorized for sale only in, Venezuela and that were different in milk fat content, sweeteners, packaging, variety and price due to market differences, were prohibited from sale in Puerto Rico where materially different PERUGINA chocolates were sold. [18] Customs has been able to prohibit soap that was made according to a different formula for the United Kingdom market, from being imported for sale into the United States, even though the soap was manufactured by a related company of the US trademark owner. [19]

Likewise in Canada, the local owner of the HEINZ mark made its own ketchup from Canadian ingredients according to a recipe adapted to the Canadian market could prevent sales of HEINZ ketchup made by its US parent company and imported and relabeled for sale in Canada. Similarly, lubricating oil, designed for the Canadian market but imported for sale in the United Kingdom, where motor oil of a different viscosity was being sold under a similar label, damaged the reputation of the trademark owner and constituted trademark infringement. [20]

In some cases, even the differences in local quality control inspections have been sufficient to render the parallel imports materially different from the genuine goods. [21]

Most laws and judicial interpretations also suspend the exhaustion rule where the gray market goods have been modified or altered so as to effect a material change. In South Africa, the unauthorized sale of SONY videocassette recorders could be prevented because the imported products were originally intended for a different market and were technically modified by the importer before being sold in South Africa and the nature of the modifications resulted in inferior products, therefore no longer constituting genuine goods. [22] In the United States, CABBAGE PATCH dolls that were produced in Spain, expressly for the Spanish market, by the licensee of the US trademark owner were prevented from sale in the United States where the Spanish language adoption papers and birth certificates were not recognized by the trademark owner's doll registration system in the United States. [23]

However, not every change is necessarily a material change that escapes the exhaustion rule. In Germany, the removal of the original grip on PRINCE tennis rackets and its replacement with an elastic band did not constitute sufficient alteration since the alteration was held not to affect the quality or the utility value of the product. [24]

2. Repackaging, relabeling and rebranding

Although parallel importers may not alter or modify the actual goods, issues concerning the genuine nature of goods also arise, most often in the pharmaceutical area, in the context of genuine goods that are either repackaged, relabelled or rebranded. In 1996, the European Court of Justice addressed pharmaceutical parallel imports, [25] holding that pharmaceutical trademark owners could restrain the further marketing of their products which have been repackaged, unless: in doing so the trademark owner would contribute to the artificial partitioning of the market; the repackaging could not directly or indirectly affect the original condition of the product, such as by merely replacing external packaging or adding labels or instructions; the packaging does not clearly identify the repackager; the repackaged product will damage the reputation of the trademark or its owner, such as through the use of defective or inferior repackaging; and the importer notifies, and provides requested samples of repackaged products to, the trademark owner before placing them on sale.

Thus, the Court articulated the guidelines for acceptable pharmaceutical repackaging but left to the national courts certain factual determinations such as what constituted an artificial partitioning and whether the repackaging would affect the original condition of the goods. Two national courts have sought additional guidance and, in so doing, have called into question certain of the Court’s positions, [26] in particular, the national courts have questioned whether a trademark owner contributes to the artificial partitioning of the market by exercising trademark rights against parallel importers, what constitutes necessary repackaging and whether it is actually necessary for parallel importers to notify trademark owners of their plans regarding parallel imports. Although the opinion of the Advocate General has been delivered, essentially upholding the prior decisions of the Court, the Court’s decision is still awaited.

Meanwhile, several European national courts have already been satisfied by the Court’s direction and have issued decisions in the context of repackaging. In Denmark, a court prohibited the sale in Denmark of a repackaged ointment originally sold in Spain, where the product was repackaged in a new Danish-language container and the product tube was completely covered with a new Danish-language sticker that reproduced the trademark, on the ground that replacing the original trademark was not necessary to market the product, where a simple additional sticker would suffice. [27] Likewise, a German court interpreted the relevant provisions of the Treaty of Rome to prohibit the repackaging in different quantities of pills marketed in blister packs of specific quantities designed for use in another country on the ground that such repackaging endangers the integrity of the contents through tampering and the rationale for specific quantities was justified by local legislation or trade recommendations. [28]

The issue of relabeling and repackaging has been addressed by the European Court of Justice outside the field of pharmaceuticals. In addressing the parallel importation of whiskey, the Court has held that it is possible for a trademark owner to prevent the sale of its products where they have been repackaged or relabeled, unless: (a) the trademark owner, in exercising such rights, would contribute to the artificial partitioning of the markets between Member States; (b) it is shown that the relabeling cannot affect the original condition of the product; (c) the presentation of the relabeled product is not such as to be liable to damage the reputation of the trademark and its owner; and (d) the person who relabels informs the trademark owner of the relabeling before the relabeled products are put on sale. In that case, the parallel importer was removing whiskey bottle labels that bore the trademark and reapplied them, or replaced them, with copies, thereby removing the identification numbers, removing the English word “pure” and the name of the approved importer. The Court held that objecting to the removal of identification numbers, which either facilitated product recall, assisted in combating counterfeiting or complied with some other legal obligation, did not contribute to the artificial partitioning of the market. However, the parallel importer’s removal of the word “pure” and of the approved importer’s name was acceptable since to retain them would violate the rules on labeling in the country of importation and would thereby constitute an artificial partition. [29]

A recent decision in the United States has also addressed the issue of parallel importers removing batch codes, in which the court held that the etching of glass perfume bottles to remove batch codes alters the product, creates a sufficient material difference in the goods and creates a likelihood of confusion, particularly in the fragrance industry where a consumer’s decision to buy the fragrance may be significantly influenced by its container. [30]

The European Court of Justice has also addressed the issue of rebranding. In the case of certain products, the trademark owner may use one trademark for the product in one country, and a different trademark for the same product in another country. In order for parallel importers to sell the products that bear one trademark into a country where a different trademark is used, they place the alternate trademark on the product; this is known as rebranding. The European Court of Justice has held that in order to determine whether the trademark owner’s assertion of their trademark rights against such rebranded products leads to an artificial partitioning of the market, it is necessary for the national court to determine whether the prevailing circumstances make it objectively necessary for the parallel importer to rebrand in order to market the product in question. [31]

Parallel imports may not be condoned if the local unauthorized distributor repackages goods so as to add other matter that was not intended to be sold with the trademark owner's genuine goods. In the United Kingdom, a parallel importer bought German SONY PLAYSTATION equipment and sold them with new electrical convertors and radio frequency modulator (RFM) units which Sony had not approved for use with UK PLAYSTATION equipment. Even though the packaging contained warnings about the repackaging and additional elements, sales were enjoined to the extent that RFMs in the repackaged products bore the SONY PLAYSTATION trademark. [32]

3. Warranty issues

Goods covered by a manufacturer's or authorized distributor's warranties may also be considered not to constitute genuine goods, particularly where parallel importers do not advise consumers that their products are not covered by such warranties. For example, under New York state law, a parallel importer must advise consumers that their products are not covered by a manufacturer's warranty in the United States or are not eligible for rebates. [33] Similarly, in a passing off action in the United Kingdom against an unauthorized dealer of genuine SONY products, where the parallel imports at issue could not be prohibited, the dealer was ordered to inform customers that the goods were not covered by the usual guarantees. [34] Presumably, this requirement on the part of parallel import dealers may reduce their incentive to sell parallel imports because customers may be wary of the goods they are purchasing.

However, some countries may in certain circumstances obligate authorized distributors to service gray market goods, such as Japan where the Fair Trade Commission Guidelines Concerning Distribution Systems and Business Practices obligate authorized distributors to repair products where it is extremely difficult for others to repair them.

B. The issues of ownership and consent

Where international or regional exhaustion is the rule, a trademark owner who owns the relevant mark in all of the relevant countries may not prevent the sale of parallel imports, particularly in those jurisdictions that place a premium on the goodwill created in a trademark, since the goodwill is considered to flow to the trademark owner in any case. However, the analysis changes where trademarks in different countries are owned by different parties.

Numerous parallel import cases have permitted parallel imports where the trademarks were owned in the relevant countries by related, although separate, companies.

An important, albeit somewhat unfortunate, case concerning the issue of related companies was decided in the United Kingdom involving the REVLON FLEX trademark on shampoos. The parent company manufactured and sold REVLON FLEX shampoo in the United States, whereas in the United Kingdom REVLON FLEX shampoo was sold by an English subsidiary. Moreover, the shampoos in each market were made according to different formulas, the principal difference being that the US shampoo contained an anti-dandruff agent that the United Kingdom shampoo did not contain. The trademark rights in both countries were owned by a Swiss subsidiary of the parent company. The REVLON FLEX shampoo in the United States was unsuccessful and was donated to a charity that subsequently sold the shampoo to others who sold the shampoo in the United Kingdom. The shampoo was also marked to indicate that it originated from the same multinational group of companies. The English Court of Appeal decided that the registered owners and users of the mark in the United Kingdom could not prevent the sale of the US shampoo in the United Kingdom on the basis of trademark infringement because every entity in the Revlon group was subject to the control of the US parent company and, since the parent company could not restrain the parallel importation, members of the Revlon group were not entitled to do so, thereby allowing a defence of consent to the parallel importer. The court reasoned that the function of the trademark was to indicate origin, not quality, and since the goods were marked to reveal that there was an interrelated group of companies involved, the origin function was served. [35] Fortunately, this case has subsequently been restricted to its particular facts.

On the other hand, a Canadian court held that the registered owner of a trademark in Canada could enjoin the unauthorized sale in Canada of genuine electric razors, even though the genuine goods originated from the registered owner's parent company. [36]

A decision by the Administrative Court in Peru interpreting Andean Community Decision 344 [37] held that the importer of goods manufactured in the United States by a related company of the Peruvian trademark owner did not commit trademark infringement because there was an "economic link" between the trademark owner and the manufacturer, even though no such requirement existed in the language of Decision 344. However, Decision 344 was subsequently replaced by Decision 486, which now provide that trademark rights are exhausted once the trademarked products are placed on the market anywhere by “the owner of the registered trademark or another party with the consent of or economic ties to that owner.” “Economic ties” are present when one party “is able to exercise a decisive influence over the other, either directly or indirectly, with respect to use of the trademark right or when a third party is able to exert that influence over both parties.” [38]

In South Korea, where parallel imports are generally allowed, customs regulations prevent the Customs Service from seizing parallel imports where the trademark registrant and producers of trademarked products are the same, related or where a distributorship relationship exists between them. However, where a Korean exclusive licensee does not import goods for sale in Korea, but is engaged solely in the manufacture of the goods bearing the mark and the relationship between the foreign trademark registrant and the Korean exclusive licensee does not fall under the above categories, parallel imports may be prevented under the theory that the nature of the source and quality of the genuine goods and the gray market goods is not identical and such goods infringe the licensee’s right to use its licensed mark. [39]

Where the relevant trademark rights in each country are owned by unrelated parties, the cases are even clearer. In the United States, the leading case on the issue involved a French cosmetics firm that sold its US operations and assigned its corresponding trademark in the United States, but continued to supply the new US trademark owner with bulk products that were packaged and sold in the United States by the trademark owner. The US trademark owner was able to prevent the importation of the authentic cosmetics from France to the United States because, the Supreme Court held, a separate goodwill had been built up by the US trademark owner. [40]

The Commonwealth position also seems to support this view. For example, in Australia the trademark in issue was owned by an exclusive distributor of an unrelated US company whose guitars, legally introduced into commerce in the United States, found their way to Australian parallel importers. Under these conditions, the parallel importation of the genuine guitars constituted trademark infringement since the trademark owner was not a related company of the US company, and the Australian trademark owner had built up its own goodwill in the mark in Australia, independent of the US manufacturer. [41]

However, divided ownership of a mark by unrelated parties may result in greater problems of a different nature. Since the classic function of a trademark is to indicate a single source of origin, in some jurisdictions into which goods from both parties find their way, third parties may be able to delay infringement proceedings or claim vitiation of the mark since it may be considered as no longer serving its single-source function. In addition, divided ownership situations may cause difficulty if the other party is nationalized or sold to an unfriendly party.

The situation involving unrelated parties should not be confused with a trademark licensing situation since a licensee or registered user may not assert rights which the licensor is unable to assert. [42] Certain exceptions to the rule of exhaustion may also exist with respect to products made under license.

Ordinarily, a product made under license and introduced into the marketplace by the licensee may not be prevented from further sale by an unauthorized distributor because the trademark owner is deemed to have consented to the product introduction. An exception may exist if the license contains territorial restrictions, provided that such restrictions do not violate applicable licensing, competition or antitrust laws. Thus, in a representative case a Singapore court enjoined the sale in Singapore of butter cookies that were imported from Indonesia from an Indonesian licensee of the trademark owner. The Indonesian licensee was authorized "solely for the manufacture of butter cookies at its own plant in Indonesia with a view to selling the products to customers residing in Indonesia" and the cookies were marked "for sale in Indonesia only". Therefore, the exhaustion rule was held not to apply where the trademark owner expressly prohibited the use of the mark by a licensee outside of Singapore. [43]

C. Consent for some, consent for all

Certain jurisdictions have also deliberated whether the consent of a trademark owner to one batch of goods necessarily implies consent with respect to all like batches of goods. The European Court of Justice has held that even though a trademark owner had authorized certain batches of shoes emanating from El Salvador to be sold in the European Economic Area, the trademark owner was able to prevent the import and sale of other batches of shoes, which emanated from the same source, in the European Economic Area, since the requisite consent must be in respect of each individual item of the product in respect of which exhaustion is pled. [44]

An interesting debate has arisen in the European Community over the issue of what constitutes consent. As indicated previously, the European Court of Justice’s view has been that a trademark owner who places goods on the market outside of the European Economic Area does not consent to their being sold within the European Economic Area. [45] However, this doctrine has been called into question in cases on referral from the United Kingdom. The European Court of Justice has been asked to determine what analysis should be applied to determine whether a trademark owner has “consented” to the marketing of products within the EEA, that originate from outside the EEA, in particular to what extent should the national courts review the commercial and contractual transactions of the trademark owner in first placing the products on the market, in order to determine whether they took sufficient precautions to prevent the goods from being sold into the EEA or whether, in the absence of such precautions, they may be deemed to have granted their consent to such sales. [46] It is curious to note that in the member state referring these questions, the United Kingdom, not all seems to be united since the Court of Session in Scotland has come to a different conclusion on similar facts and applying similar laws. [47]

In the United States it has been held that goods that have been diverted from the factory of an authorized manufacturer may not be genuine goods if they have not been inspected by the trademark owner. [48] This exception may be particularly helpful to trademark owners whose goods are made by a contract manufacturer but are diverted, without their knowledge, for unauthorized sale to third parties.

D. The luxury exception

Two cases may signify a new exception to the exhaustion theory, although only time will tell if the exception takes hold. In a case before the European Court of Justice, the court rendered an opinion that a trademark or copyright owner may not prevent a dealer in parallel imports from using the trademark or copyrighted material in advertising, unless such advertising is liable to damage the reputation of the trademark or product significantly. [49] Although the court did not find such damage in that case, it is interesting to note that the Advocate General’s opinion had hinted at the ability of trademark owners with respect to luxury goods where the luxurious image of the goods may be damaged. [50]

In the United States, a Hungarian porcelain manufacturer and its exclusive US distributor, which carefully screened and selected the porcelain inventory for the US market, were able to prevent an unauthorized US merchant's sale of genuine porcelain products that were not otherwise available in the United States, on the grounds that the highly artistic luxury goods sold by the US merchant were "materially different" from those of the exclusive distributor since maintaining the goodwill of the trademark in the United States was dependent in part on the selection and advertising services performed by the exclusive distributor. [51]

E. Internet implications

At least one court has wrestled with the issue of parallel imports in cyberspace. A German defendant advertised FENDER guitars for sale on the internet. The guitars were imported from the United States into Germany but sold only into third countries. The court determined that, even though there were no sales of the guitars in Germany, the importation and offer for sale was controlled from Germany and, therefore, such acts were subject to the trademark infringement provisions of the German Marks Act. [52]

[17] Ladas, Patents, Trade Marks and Related Rights: National and International Protection (1975) vol II, ch. 37.

[18] Societe de Produits Nestle, SA v. Casa Helvetia, Inc. , 982 F2d 633, 25 USPQ2d 1256 (CA 1 1992).

[19] Lever Brothers Co. v. U.S. , 981 F2d 1330 (CADC 1993). See also, Ferrero U.S.A., Inc. v. Ozak Trading, Inc. , 753 F. Supp. 1240, 18 USPQ2d 1052 (D.C.N.J. 1991) where parallel imports of TIC TAC breath mints were prohibited because they were materially different in size and caloric content from the authorized product.

[20] Castrol Ltd v. Automotive Oil Supplies Ltd. (1983) R.P.C. 315 (Ch. D.). See also Australian Law of Trademarks and Passing-Off , Shanahan, D.R., 2d ed. (1990), p. 521, "What is more likely is that a plaintiff will be able to establish a misrepresentation as to quality on the principle of Spalding v. Gamage [ A.G. Spalding & Bros. v. A.W. Gamage Ltd. (1915) 32 R.P.C. 273 (H.L.)] on the basis, for instance, that the parallel import is of inferior manufacture, that it is unsuitable for local conditions, that it has been modified without authorization for local conditions, that it is not backed by the after-sales service or guarantees available to the authorized import, or that it is old or rejected stock."

[21] See El Greco Leather Prod. Co. v. Shoe World Inc. , 806 F2d 392 (2d Cir. 1986) (goods would not be shipped without a certificate from the trademark owner’s agent on complying with standards).

[22] Television Radio Centre (PTY) Limited v. Sony KK t/a Sony Corporation and Tedelex Sound and Vision (Pty) Limited , 1987 (2) S.A. 994 (A).

[23] Original Appalachian Artworks, Inc. v. Granada Electronics, Inc. , 816 F2d 68 (2d Cir. 1987).

[24] European Intellectual Property Reports [1988] vol. 7 at p. D-150., Decision of the Federal Supreme Court, 28 October 1987.

[25] Bristol-Myers Squibb and Others v Paranova A/S [1996] ECR I-3457, Joined Cases C427/93, C429/93 and C436/93; Eurim-Pharm v Beiersdorf and Others ; Case C232/94 MPA Pharma v Rhone Poulenc [1996] ECR I-3603, Joined Cases C71/94, C72/94 and C73/94.

[26] Merck, Sharp & Dohme GmbH v. Paranova Pharmazeutika Handels GmbH, ECJ Case No. C-443/99 and Boehringer Ingelheim KG v. Swingward Ltd, ECJ Case No. C-143/00.

[27] Lovens Kemiske Fabrik Produktionsaktieselkab v. Paranova A/S.

[28] Decision re: the KERLONE Trade Mark , interpreting Article 36(1) EEC, Before the Hanseatisches Oberlandesgericht (Provincial Court of Appeal, Hamburg) 25 April 1991.

[29] George Ballantine & Son Ltd. [1997] ECR I-6227, Case C-349/95.

[30] Davidoff & Cie SA v. PLD Int’l , 11 ^th Cir., No. 00-14368, Aug. 8, 2001.

[31] Pharmacia & Upjohn SA v. Paranova A/S [1999] ECR I-6927, Case C-379/97. See also, Re: Prozac/Fluctin Appellate Court of Frankfurt 11/4/99 Doc. No. 6 U 155/98 (defendant enjoined from rebranding French PROZAC pharmaceuticals under FLUCTIN mark and selling in Germany where PROZAC mark could not be used due to conflicts with other marks, since rebranding was not justified); Aventis Pharma Aktiebolag v. Paranova Lakemedel Aktiebolag [2000 City Court of Stockholm] (Case No. T-10375-99) [2001] ETMR 60 (defendant enjoined from rebranding Spanish LIMOVAN drug in Sweden under IMOVANE mark since rebranding was not objectively necessary for defendant to sell drug in Sweden).

[32] Sony Computer Entertainments Inc. v. Tesco Stores Ltd [1999] High Court of Justice (Chancery Division) Case No. MC1999 No. 3983.

[33] New York State General Business Law, s. 218-aa.

[34] Sony KK v. Surrey Electronics (London) Ltd. , ([1983] FSR 302).

[35] Revlon Inc. v. Cripps & Lee Limited , in the Supreme Court of Judicature, Court of Appeal (Civil Division), Case 1979 R 2675, decided November 22, 1979, (1980) FSR 85.

[36] Remington Rand Ltd. v. Transworld Metal Co. Ltd. , (1960) Ex. C.R. 462, 32 C.P.R. 99.

[37] Trademark laws in the Andean Community nations, namely, Bolivia, Colombia, Ecuador, Peru and Venezuela, were governed by Andean Pact Decision 344, which was replaced in 2000 by Decision 486.

[38] Andean Community Decision 486, Article 158.

[39] State v. Myung-Hee Kim (Supreme Court Case 96 Do 2191) (1997).

[40] A. Bourjois & Co. v. Katzel , 260 U.S. 689 (1923).

[41] Fender Australia Pty. Ltd. v. Beyk (t/a Guitar Crazy) & Others (1990) 89 A.L.R. 89. See also Transport Tyre Sales Pty Ltd v. Montana Tyre Rims & Tubes Pty Ltd (1999), where Japanese trademark owner assigned Australian trademark registrations to Australian distributor, who, after assignment was recorded with the Trademark Office, was able to prevent importation by third parties of Japanese trademark owner’s genuine goods.

[42] Delphic Wholesalers Pty Ltd v. Elco Food Co. Pty Ltd (1987) 8 IPR 545 (S.C. of Vic.) held that registered user, who was the exclusive Australian importer of Greek olive oil, could only enforce claims for infringement enforceable by the registered proprietor against a party importing genuine Greek olive oil for sale in Australia.

[43] Danish Fancy food Group A/S v. Hock Seng Food Pte Ltd (High Court of Singapore, Suit No. 2129 of 1988, Chan Sek Keong, J. decision of November 25, 1988, unreported). See also, Castrol Ltd v. Automotive Oil Supplies Ltd. (1983) R.P.C. 315 (Ch. D.) in Canada where, in addition to difference in goods, language limiting sale of Canadian oil to territory of Canada was relevant to determination of trademark infringement in the United Kingdom.

[44] Sebago Inc. and Ancienne Maison Dubois et fils SA v. GB-UNIC SA , Case C-173/98[1999] ECR I-4103; See also Primark Stores Limited and Primark Holdings v. Lollypop Clothing Limited , 4 Dec. 2000, High Court of Justice [2001] ETMR 30, holding that diverted jeans from plaitiff’s supplier could not be genuine goods of claimant, notwithstanding they emanate from claimant’s supplier, since goods must be”adopted” by the trademark owner, citing Vokes v. Evans (1932) 49 R.P.C. 140 where contract manufacturer of screen wipers sold them to another party and court upheld passing off claim on the ground that the goods “were never ordered by the Plaintiffs; there were never delivered to the Plaintiffs and never accepted by them; and therefore they never were the Plaintiffs’ goods at all.”

[45] See “ Silhouette”. See also Parfums Christian Dior, SA v. Etos, BV , (Court of Appeal of The Hague 2000) Case No. 98/950 (fragrance products sold by trademark owner in Argentina and then imported into EEA by another and sold to defendant could be prevented from being sold as they were not placed on EEA market with trademark owner’s consent).

[46] Zino Davidoff SA v. A & G Imports Ltd; Levi Strauss & Co Levi Strauss (UK) Ltd v. Tesco Stores, Tesco plc and Costco Wholesale UK Ltd ; ECJ Joined Cases C-414/99, C-415/99 and C-416/99.

[47] Zino Davidoff SA v. M&S Toiletries Ltd and JOOP! GmbH v M & S Toiletries Ltd [2000] SLT 683 (Court of Session), Singapore originating perfumes were prevented from sale in Scotland as they were not introduced into the EEA market by the trademark owner and there was no implied consent to do so where the products were originally sold under German law to Singapore as German contract law did not require parties to place contractual restrictions on further distribution.

[48] Hunting World Inc. v. Reboans Inc. , 24 USPQ2d 1844 (ND Calif 1992).

[49] Parfums Christian Dior v. Evora , Case C-337/95 [1997] ECR I-6013.

[50] April 29, 1997 Opinion of Advocate General in Case C-337/95 Parfums Christian Dior v. Evora.

[51] Martin's Herend Imports v. Diamond & Gem Trading USA , 42 USPQ2d 1801 (5th Cir. 1997).

[52] Re: Fender Musical Instruments, 1998 GRUR Int. 806 (1997 Stuttgart Oberlandesgericht).