Makro Zelfbedieningsgroothandel CV, Metro Cash & Carry BV and Remo Zaandam BV v Diesel SpA.
Date: 2009-10-15
19. In that regard, it should be noted at the outset that, in paragraph 46 of Zino Davidoff and Levi Strauss , the Court stated that the consent to the placing on the market in the EEA of goods previously marketed outside the EEA may result not only from an express statement of that consent but may also ‘be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights’. In paragraphs 53 to 58 of that judgment, the Court added that such implied consent must be based on evidence capable of positively establishing that the trade mark proprietor has renounced any intention to enforce his exclusive rights, and that, in particular, such consent cannot be inferred from the mere silence of the proprietor.
20. That being clear, it must be recalled that, according to well-established case-law, Articles 5 to 7 of Directive 89/104 effect a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the Community (Case C‑355/96 Silhouette International Schmied  [1998] ECR I‑4799, paragraphs 25 and 29, and Zino Davidoff and Levi Strauss , paragraph 39).
21. In particular, Article 5 of the directive confers on the trade mark proprietor exclusive rights which entitle him, inter alia, to prevent any third party from importing goods bearing the mark, offering the goods, or putting them on the market or stocking them for these purposes. Article 7(1) of the directive contains an exception to that rule, in that it provides that the trade mark proprietor’s rights are exhausted where the goods have been put on the market in the EEA by him or with his consent ( Zino Davidoff and Levi Strauss , paragraph 40; Case C-244/00 Van Doren + Q  [2003] ECR I-3051, paragraph 33; and Case C-16/03 Peak Holding  [2004] ECR I‑11313, paragraph 34).
22. It is therefore apparent that consent, which is tantamount to the proprietor’s renunciation of his exclusive rights within the meaning of Article 5, constitutes the decisive factor in the extinction of those rights and must, therefore, be so expressed that an intention to renounce those rights is unequivocally demonstrated (Case C-59/08 Copad  [2009] ECR I-0000, paragraph 42).
23. Such an intention will normally be gathered from an express statement of that consent (see, to that effect, Zino Davidoff and Levi Strauss , paragraph 46, and Copad , paragraph 42). However, the requirements deriving from the protection of the free movement of goods, enshrined, inter alia, in Articles 28 EC and 30 EC, have led the Court to hold that such a rule can be qualified.
24. Thus, first, the Court has held that exhaustion of the exclusive rights provided for in Article 5 of Directive 89/104 can occur, inter alia, when the goods are put on the market by an operator with economic links to the proprietor of the trade mark, for example a licensee (see, to that effect, IHT Internationale Heiztechnik and Danzinger , paragraph 34, and Copad , paragraph 43).
25. Second, as noted in paragraph 19 of the present judgment, the Court’s case-law also makes clear that, even in situations where the goods in question were first placed on the market in the EEA by a person having no economic link to the proprietor of the trade mark and without his express consent, the intention to renounce the exclusive rights provided for in Article 5 of Directive 89/104 may result from that proprietor’s implied consent, it being possible to infer such consent on the basis of the criteria set out in paragraph 46 of Zino Davidoff and Levi Strauss .
26. Whilst it is true that the Court, in paragraph 46 of Zino Davidoff and Levi Strauss , referred to goods first being placed on the market outside the EEA, such a reference must be read in the light of the fact that, in the case which gave rise to that judgment, the goods in question had previously been marketed outside the EEA and had then been imported and placed on the market within it.
27. There is nothing, however, in the wording of the judgment in Zino Davidoff and Levi Strauss  which gives grounds for concluding that the statements made by the Court in paragraph 46 of that judgment, concerning the facts and circumstances from which the implied consent of a trade mark proprietor may be inferred, are applicable only in a factual context such as that and cannot have general application.
31. By contrast, as has also been made clear by the Community case-law, possible marketing outside the EEA does not have any exhaustive effect in that regard (see Case C-173/98 Sebago and Maison Dubois  [1999] ECR I‑4103, paragraph 21; Van Doren + Q , paragraph 26; and Peak Holding , paragraph 36).
32. Therefore, in order to ensure the protection of the rights conferred by the trade mark and to make possible the further marketing of goods bearing a trade mark without the proprietor of the trade mark being able to oppose that, it is essential that the proprietor can control the first placing of those goods on the market in the EEA, irrespective of the fact that they may have first been marketed outside that area (see, to that effect, Sebago and Maison Dubois , paragraphs 20 and 21; Zino Davidoff and Levi Strauss , paragraph 33; Van Doren + Q , paragraph 26; and Peak Holding , paragraphs 36 and 37).