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Post-Brexit exhaustion of trademark rights: what you need to know!

16 april 2024

As a trademark owner, the reputation and value of your trademark are essential to your business. Affixing your trademark to your products ensures that your customers recognize the origin of the products they purchase and can trust that these products meet local quality standards. However, after you have sold your products on the markets within the European Economic Area (EEA), there are limits to the power you can exercise over the products bearing your trademarks. We highlight the impact of the 2020 Brexit in this regard.

When a trademarked product is offered within the EEA with the permission of the trademark owner, the trademark rights with respect to this product are so-called ‘exhausted’. This means that the product can generally be resold within the EEA without permission of the trademark owner. The doctrine of ‘exhaustion’ exists to support the free movement of goods within the EEA. Without exhaustion of trademark rights, trademark owners would have the ability to create separate markets within the EEA, which goes against the idea of a single market.

Following the departure of the United Kingdom (UK) from the EEA in 2020, a striking legal structure has replaced the exhaustion doctrine regarding the UK. The EEA and UK perspective on exhaustion are directly opposed. When a product is initially offered in the EEA market, the trademark rights with respect to that product are considered exhausted from the UK perspective. Oppositely, the trademark rights with respect to a product that was initially offered in the UK market are not considered exhausted from an EEA perspective.

This leads to the strange situation that trademarked products from the EEA can be imported into the UK without permission of the trademark owner for the UK, but permission is required for the import of products from the UK into the EEA.

Politically, this situation is not expected to change. It is good to be aware of this legal structure, whether you are a trademark owner seeking to enforce trademark rights or an importer of third-party products. Do you have any questions about enforcing trademark rights in the EEA? Contact our Intellectual Property/ICT & Privacy team: Thomas Berendsen, Iris van der Wal, Gie van den Broek, Fleur Boom and Maud van den Nieuwenhuijzen

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