In the fashion world it is the brand that largely controls consumers’ choice of clothes or accessories. Trademarks often contribute to the success of not only the trademark owner but also of counterfeit manufacturers. But counterfeiting and imitation are not the only forms of wrongdoing in the world of trademarks and infringement may occur even when importing or exporting the original goods.
The original product vs. the trademark rights
The proprietor of a national or Union registered trademark has the exclusive right to use the mark and decide on its use in the protected territory. This includes also decision as to introducing the trademarked product on the market in that territory. Once the original goods are first placed on the market (first sale), the trademark right is said to be exhausted.
First sale of trademarked goods: where and by whom
The right of first sale may be explained on the example of a global clothes manufacturer who decided to market clothes and accessories under IPLLECTUAL brand (known to our readers) in Russia, Ukraine and Poland. A certain Polish company X decides to purchase IPLLECTUAL products in Russia and import them into Poland. X’s move is quickly responded to by the owner of IPLLECTUAL brand who sends X a cease and desist letter claiming trademark infringement. X’s defence is that the good are, after all, original. But whether or not the goods are original is in this case irrelevant for a finding of infringement. Goods bearing a Union trademark may be sold in EEA countries only if they have been placed on the market by the trademark’s owner. The goods in our example were first sold in Russia and cannot be freely sold in the EU.
Such conduct by the importer offers grounds for raising claims under Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark and/or, cumulatively and for Poland, under the Industrial Property Law Act of 30 June 2000. Accordingly, the trademark owner is entitled to obtain an injunction against the importer and may claim disgorgement of unfair profits or, if the infringement was with fault, also damages either under the general tort rules or in the form of a sum of money equal to the license fee or some other suitable remuneration which would otherwise be due to the proprietor at the time of the claim for the trademark license.
Check what we refer to:
- Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark;
- Industrial Property Law Act of 30 June 2000.
You are encouraged to read all our texts devoted to the fashion industry in connection with the Fashion Fair (21-22. February 2018, Poznań).