WRITTEN QUESTION E-0363/00 by Klaus-Heiner Lehne (PPE-DE) to the Commission. The Commission's attitude towards the problem of the exhaustion of trade mark rights and the admissibility of parallel import.
Date: 2000-02-14
Institutions: European Parliament, Provisional data
Subjects: World Trade Organisation, brand name, consumer price, distributive trades, import (EU), import policy, industrial counterfeiting, patents licence, tariff negotiations, third country, trade-mark law

21.11.2000

EN

Official Journal of the European Communities

C 330 E/139

(2000/C 330 E/156)

WRITTEN QUESTION E-0362/00

by Klaus-Heiner Lehne (PPE-DE) to the Commission

(14 February 2000)

Subject: The Commission(cid:146)s attitude towards the problem of the exhaustion of trade mark rights and the

admissibility of parallel imports

The effect of Article 7 of the EU trade mark directive (89/104/EEC) (1) is that since 1995 at the latest the
principle of (cid:145)international exhaustion(cid:146) of trade mark rights hitherto applied in many Member States has
been replaced with the principle of (cid:145)European exhaustion(cid:146) in the trade mark law of the EU Member States.
Since that date, and in particular with regard to the (cid:145)Silhouette(cid:146) and (cid:145)Sebago(cid:146) rulings of the European Court
of Justice, there has been no room for parallel imports of favourable branded goods from outside the EU.
In its report of 1 December 1999 the Commission summarises the discussion hitherto and looks into
various options for changing the law, although without taking sides on retaining or amending the present
principle of exhaustion.

In its assessment of the question of whether commercial parallel imports from outside the EU should
1.
be possible in the future, what importance does the Commission attach to the increasing supply of low-
cost branded goods from EU third countries direct to the final consumer via the Internet? Does it agree
that the increasing demand on the part of private customers via the Internet causes considerable problems
for retailers and mail order businesses if the latter do not, obtain supplies of low-cost parallel imports and
hence are not able to offer low prices?

2.
Has the Commission taken note of representations by the sector affected that the legal position as it
stands now results in permissible intra-European parallel trade in branded goods being effectively restricted
and subject to uncertainties if stocks in hand include, unknown to businesses, products from impermissible
third country imports which would result in legal action being taken by manufacturers of branded goods
against such businesses? Does the Commission intend to draw conclusions from these representations in
the near future and provide remedy?

In the light of the criticism expressed at the (cid:145)n/e/r/a report(cid:146), does the Commission intend to arrange a

3.
further questionnaire or study to clarify matters before any decision is taken?

Does the Commission intend to make the issue of international rules on exhaustion of trade mark

4.
rights a topic for the forthcoming WTO negotiations? If not, why not?

(1) OJ L 40, 11.2.1989, p. 1.

(2000/C 330 E/157)

WRITTEN QUESTION E-0363/00

by Klaus-Heiner Lehne (PPE-DE) to the Commission

(14 February 2000)

Subject: The Commission(cid:146)s attitude towards the problem of the exhaustion of trade mark rights and the

admissibility of parallel import

The effect of Article 7 of the EU trade mark directive (89/104/EEC) (1) is that since 1995 at the latest the
principle of (cid:145)international exhaustion(cid:146) of trade mark rights hitherto applied in many Member States has
been replaced with the principle of (cid:145)European exhaustion(cid:146) in the trade mark law of the EU Member States.
Since that date, and in particular in the light of the (cid:145)Silhouette(cid:146) and (cid:145)Sebago(cid:146) rulings of the European Court
of Justice, there has been no room for parallel imports of favourable branded goods from outside the EU.
In its report of 1 December 1999 the Commission summarises the present discussion and looks into
various options for changing the law, although without taking sides on retaining or amending the present
principle of exhaustion.

1. What is the Commission(cid:146)s attitude towards the question of (cid:145)international exhaustion(cid:146) and towards
amending Article 7 of the trade mark directive, and does it intend to propose an amendment to the
Council and Parliament?

C 330 E/140

Official Journal of the European Communities

EN

21.11.2000

Does the Commission share the view of persons advocating a change in the law that reintroducing
2.
parallel imports could cut consumer prices for certain branded goods by 30-50 % and, in the light of the
results of the (cid:145)n/e/r/a report(cid:146), does it accept the calculation that savings in the order of EUR 35 to 40 billion
would be possible for consumers EU-wide?

3. What is the Commission(cid:146)s attitude towards the argument currently being put forward by the branded
industry that future parallel imports would lead to an increased incidence of product piracy? Does the
Commission have any information, beyond that presented in its report of 1 December 1999, to suggest
that the incidence of product piracy has diminished or increased since the ban on parallel imports in
1995?

4. What is the Commission(cid:146)s view of the argument put forwarded by the branded goods industry that a
future introduction of parallel imports would result in a shift of jobs from the EU to third countries? Does
the Commission not think that it is much more conceivable that the law as it stands at present is an
inducement to shift production facilities abroad, with the loss of jobs in the EU?

(1) OJ L 40, 11.2.1989, p. 1.

Joint answer
to Written Questions E-0362/00 and E-0363/00
given by Mr Bolkestein on behalf of the Commission

(7 April 2000)

The discussion on exhaustion continues on the basis of a Commission staff working paper, addressing
certain key issues which has been submitted to the Council and the Parliament. In the light of these
discussions and all other relevant factors, the Commission will define its position on the question of
exhaustion of trade mark rights, as soon as appropriate and feasible.

The Honourable Member has raised an interesting and important question concerning the possible impact
of e-commerce on the exhaustion issue. The Commission is currently examining this as a matter of
priority. The situation concerning parallel trade into the Community depends on the outcome of the
ongoing discussions on exhaustion. If a possible change of exhaustion regime did not solve this issue, the
Commission might have to reflect on the need for other measures.

The Commission is happy with the national economic research associates (NERA) study and is using the
study as a basis for the work on exhaustion. There is, at least for the moment, no immediate need for
further studies to be carried out. The Commission staff paper lists several different options to change the
current exhaustion regime. One of them is to raise this question at a bilateral or multilateral level with
third countries. Whether or not the issue of exhaustion should be raised in the forthcoming World trade
organization (WTO) negotiations will be examined when the Commission defines its position on the
exhaustion question.

The Commission will take a position on international exhaustion after the current discussions have been
finalised. It is therefore premature to react to the question of the Honourable Member. Concerning the
Honourable Member(cid:146)s reference to re-introduction of parallel imports the Commission would underline
that re-introducing parallel trade is not really the issue. The discussions concern the question of exhaustion
of trade mark rights. Many other factors have an impact on parallel imports, such as import duties, import
quota and vertical relationships. The calculation of possible effects on consumer pricing presented by the
Honourable Member is not supported by the information provided in the NERA study.

The Commission considers the phenomenon of counterfeiting and piracy as a serious problem. The
possible impact of exhaustion regimes on this problem has to be carefully analysed. The Commission has
so far not received any information on the possible impact of a ban on parallel imports. The question of
the possible impact on employment of a change in the exhaustion regime is still under discussion and it is
too early to draw any conclusion from this discussion.