Case C-324/08

Makro Zelfbedieningsgroothandel CV and Others

v

Diesel SpA

(Reference for a preliminary ruling from the Hoge Raad der Nederlanden)

(Directive 89/104/EEC – Trade mark law – Exhaustion of trade mark proprietor’s rights – Placing of goods on the market in the European Economic Area by a third party – Implied consent – Conditions)

Summary of the Judgment

Approximation of laws – Trade marks – Directive 89/104 – Exhaustion of the right conferred by the mark – Placing of goods on the market directly in the European Economic Area by a third party with no economic link to the trade mark proprietor – Implied consent of the proprietor – Conditions

(Council Directive 89/104, Art. 7(1))

Article 7(1) of First Directive 89/104 relating to trade marks, as amended by the Agreement on the European Economic Area (EEA), must be interpreted as meaning that the consent of the proprietor of a trade mark to the marketing of goods bearing that mark carried out directly in the EEA by a third party who has no economic link to that proprietor may be implied, in so far as such consent is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market in that area which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his exclusive rights.

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’s being able to oppose that, it is essential that the proprietor should be able to control the first placing of those goods on the market in the EEA.

Therefore, the purely factual question whether the goods bearing the trade mark concerned were marketed for the first time within the EEA or outside it is not, as such, relevant for the purposes of the application of the exhaustion rule laid down in Article 7(1) of Directive 89/104.

In those circumstances, if the possibility of inferring from certain facts and circumstances the implied consent of the trade mark proprietor – within the meaning of Joined Cases C-414/99 to C-416/99 Zino Davidoff and Levi Strauss – were to be limited to only those cases in which the first marketing of the goods in question occurred outside the EEA, that would not be in accordance with either the wording or the objectives of Article 7(1) of Directive 89/104.

(see paras 32-35, operative part)