Background

A direct forerunner of this report was the one drawn up by the Spanish Group of the AIPPI on question Q 101, "Parallel importation of patented products", published in the year-book 1990/V, pages 35 et seq.

In that report the question was approached from the dual standpoint of Spanish legislation and jurisprudence and Community legislation and jurisprudence, and the existence of contradictions between them was revealed.

To express it in highly summarised form, the Spanish Group took a stance at that time in the sense that, given the precedence of Community law over national law and despite the provisions of sections 53 of the Spanish Patent Act (hereinafter LP) and 32.1 of the Spanish Trademark Act (hereinafter LM), which lay down the rule of national expiry of rights, it should be understood that the holder of a Patent in a particular country may invoke its rights in this country against importation of the patented product from another country, if the latter is not a country of the European Economic Community. If it is, there then arises the figure of Community expiry with the qualifications deriving from the Court of Justice of the European Communities.

At national level, the legal framework existing today is essentially the same as that which existed in 1990 when the Spanish Group issued its report on question Q 101, since the rules contained in the LP and in the LM, relating to expiry have undergone no change and, surprising as it may seem, the decision of 15 May 1985 remains the only one Spain's Supreme Court has issued on the subject of expiry of industrial property rights, and specifically on expiry of the Trademark right.

At European Economic Community level, however, there have been new aspects, particularly decisions of the Court of Justice of the European Communities, which will be the subject of discussion in the various sections of this report.

Subjects of consultation

1.

Does international expiry of (i) Patents; (ii) Trademarks and (iii) other industrial property rights exist? That is, can the holder of an Industrial Property right exercise his Industrial Property right against parallel imports from another country, when the imported products have been placed in the market in that country by the holder of the Industrial Property Right or with his consent?

In national legislation, both the LP, which also regulates Utility Models, and the LM, continue to lay down the principle of national expiry.

Thus, section 53 of the LP establishes as follows:

"The rights conferred by the Patent do not extend to acts carried out in Spain in relation to a product protected by the patent after that product has been offered for sale in Spain by the holder of the Patent or with his express consent".

And section 31.1 of the LM lays down the following:

"The right conferred by registration of the Trademark shall not permit its holder to prohibit third parties from using it for products offered for sale in Spain under that Trademark by the holder or with his express consent".

Interpretation a sensu contrario of these two rules could lead one to the conclusion that the holder of a Spanish Patent, Utility Model or Trademark can exercise his rights against those who import products offered for sale in the market into a country other than Spain, even if this was done by the holder of the rights or with his express consent.

Such an interpretation is not valid, however, for in the first place it would appear over-simplistic to admit without further ado a sensu contrario interpretation of a rule permissive for third parties so as to make it into a rule that is restrictive of those same third parties.

Furthermore, and here there can be no argument, such an interpretation of the Spanish regulations contradicts community regulations, of higher rank, to which reference is made in the next section.

It must be stressed, furthermore, that there remains only one decision by the Spanish Supreme Court, dated 15 March 1985, as we saw earlier, and that decision found in favour of international expiry, at least of the Trademark right, though it should be borne in mind that that decision was issued prior to promulgation of the current LP and LM.

At European Economic Community level, the Jurisprudence emanating from the Court of Justice of the European Communities (hereinafter TJCE) has established definite criteria in the sense that Community expiry of industrial property rights does exist.

Thus, on the subject of Patents, the decisions in CENTRAPHARM/STERLING GROUP, of 31 October 1974 and MERCK/STEPHAR of 14 July 1981, establish perfectly clearly the principle of Community expiry, when the product covered by the Patent has been marketed in a country of the Community by the holder or with his consent.

The same doctrine was established in respect of Trademarks in the CENTRAPHARM/WINTHROP decision, of 31 October 1974, whose doctrine also followed the TERRAPIN-TERRANOVA decision of 22 June 1976 and other subsequent decisions.

The principle of Community expiry of industrial property rights was later expressly recognised in various rules in force in Community law, namely section 7 of the First Directive of the Council of 21 December 1988, relating to approximation of the legislations of the Member States on Trademarks (DM), section 13 of the Community Trademark Regulations (RMC), section 28 (not yet in force) of the Community Patent Convention (CPM) and section 15 of Directive 98/71/CE of the European Parliament and of the Council of 13 October 1998, on the legal protection of drawings and models (DDM).

As we have seen, these provisions take up the principle of Community expiry of industrial property rights, in that - except in exceptional cases - they prevent the holder of a Trademark, Patent, Drawing or Industrial Model right from exercising that right in order to oppose parallel imports when the product has been offered for sale in a Community country, by the holder himself or by a third party with his consent.

None of these rules, however, explicitly denies the existence of international expiry of the right, a denial which could be inferred from its interpretation a sensu contrario, which, as we have seen, is nevertheless considered simplistic by a certain sector of the doctrine.

In this respect, it should be noted that there is a proposed Directive from the European Parliament and from the Council relating to approximation of the legal systems for protection of inventions by means of the Utility Model, (PDMV) presented by the Commission on 12 December 1997, section 21 of which, referring to Community expiry of the rights, goes beyond what was set out in the rules discussed above.

Indeed, paragraph 1 of this section, in line with the existing rules, establishes the following:

"1. The rights conferred by the Utility Model shall not extend to acts relating to the product covered by this Utility Model, after that product has been marketed in the Community by the holder of the right or with his consent".

But it is paragraph 2, transcribed below, which truly negates the existence of international expiry:

"2. Notwithstanding this, the rights conferred by the Utility Model shall extend to acts relating to the product covered by this Utility Model, after that product has been marketed outside of the Community by the holder of the right or with his consent".

Thus, if this Directive were approved, section 21.2, which has been transcribed, would be the first rule which explicitly negated the existence of international expiry.

There are two recent decisions of the TJCE which come down clearly in favour of the impossibility of admitting international expiry.

These are the decision of 16 July 1998, handed down in subject C-355/96, the SILHOUETTE decision, and of 1 July 1999, handed down in subject C-173/98, the SEBAGO decision.

Up to a point, these decisions imply continuity of the doctrine sketched out in the decisions of 15 June 1976 (51/75, EMI decision) and 9 February 1980 (270/80) HARLEQUIN and SIMON, where the literal tenor of their recitals is truly unequivocal.

Thus, the SILHOUETTE decision declares that:

"The first sub-section of section 7 of Directive 89/104/CE of the Council, of 21 December 1988, the first directive relating to approximation of the legislations of the Member States on Trademarks, in the version thereof modified by the Agreement on the European Economic Area, of 2 May 1992, opposes national rules which provide for expiry of the right conferred by a Trademark in respect of products marketed outside of the European Economic Area under said Trademark by the holder or with his consent".

According to the SEBAGO decision:

"Sub-section 1 of section 7 of Directive 89/104/CE of the Council, of 21 December 1988, the first directive on approximation of the legislations of the Member States on Trademarks, in the version thereof modified by the Agreement on the European Economic Area of 2 May 1992, must be interpreted in the sense that expiry of the rights conferred by the Trademark only arises when the products have been marketed in the Community (in the European Economic Area following the coming into force of the Agreement on the European Economic Area) and that this concept does not allow of the Member States' national law providing for expiry of the rights conferred by the Trademark in relation to products marketed in third countries".

The fundamental reasons for which the Court reaches such decisions, are in summary form the following:

"In order to facilitate the free circulation of products and the free provision of services it is fundamental to ensure that registered Trademarks enjoy the same protection in the legislations of all the Member States, though without this depriving them of the power to grant broader protection to Trademarks which have acquired renown". (Legal Ground 24 of the SILHOUETTE decision).

"From a situation in which some Member States could lay down international expiry while others would only provide for Community expiry there would derive insurmountable obstacles for free circulation of goods and free provision of services ". (Legal Ground 27 of the same decision).

It should be observed, and this is pointed out by various detractors of the doctrine established by these decisions, that negation of international expiry is based on reasons absolutely extraneous to what constitutes the Trademark right, which has been defined by the TJCE itself in various decisions taking the following form:

"The specific object of the Trademark right consists particularly in conferring upon the holder the right to use the Trademark to introduce a product for the first time into economic traffic and, thereby, to protect it against competitors aiming to abuse the position and renown of a Trademark by selling products unduly designated with it ".

A priori, parallel importation (Community or extra-Community) of products legitimately distinguished with the Trademark would not seem to affect the specific object of the Trademark right, as defined repeatedly by the TJCE.

These are therefore reasons open to challenge deriving from the need to prevent obstacles to the free circulation of goods and the free provision of services, taken into account to negate international expiry of the Trademark right.

As noted earlier, in Spain the Supreme Court has issued no decision along the lines of the SILHOUETTE and SEBAGO decisions, although there exist decisions from lower courts that apply their doctrine.

Finally, and in order to complete the legal scenario at European level, it is deemed necessary to make some allusion to the at least apparent contradiction that arises between the aforesaid doctrine as expressed by the TJCE in the SILHOUETTE and SEBAGO decisions and that provided for in the successive EEC Regulations of the Council, nos. 3.842 of 1 December 1986, 3.295 of 22 December 1994 and 241 of 25 January 1999, which establish measures directed at prohibiting free clearance, exportation, re-exportation and inclusion under suspension regime of goods with usurpation of Trademark and pirate goods.

Currently in force is the last of the aforesaid Regulations, no. 241/1999, of the Council, of 25 January 1999.

Stated in summary form, these Regulations establish measures directed at preventing introduction into the Community of goods that might infringe Trademark, Copyright, Patent and similar rights.

The first of these Regulations promulgated related solely to goods with usurpation of Trademark; the second extended its effects to pirate goods, understood as those which involved infraction of Copyright rights; and the third extended their effects to goods which involved infraction of Patent of complementary certificates and Community Trademarks.

The Regulations define what was to be understood by goods whose entry into the Community is not authorised in so far as they infringe industrial property or related rights, though all of them contain one very important exception in their application.

The current one is that of paragraph 4 of section 1 of the 1999 Regulations, according to which:

"These Regulations shall not apply to those goods on which their figure a factory or commercial Trademark with the consent of the holder of said Trademark or that are protected by a Patent or a certificate, by royalties or related right or by a right relating to drawings or models which have been manufactured with the consent of the holder of the right, but that, without the consent of the latter, are in one of the situations covered by letter a) of part 1".

Letter a) of part 1 refers to goods declared for free clearance or goods discovered on the occasion of an inspection.

It is therefore clear that the Regulations cannot be applied and cannot be used to prevent entry into the Community of legitimate goods, that is, goods manufactured and/or marked and marketed, outside of the European Economic Area, by the holder of the Industrial Property Right or with his consent.

In the opinion of some commentators, these Regulations "prohibit prohibition" of parallel imports of legitimate products, the latter understood as products marketed, outside of the European Economic Area, by the holder of the Industrial Property Right or with his consent, even where it is on record that said holder refused their introduction into that territory.

There is some discussion, at least in Spain, of the real scope of these Regulations, that is, whether these are provisions that permit the adoption of urgent measures, at Customs posts, only against goods which must undoubtedly be considered as of illicit origin (falsifications), which infringe industrial property rights recognised in the Community territory, but which exclude exercise of these rights against the circulation of goods of licit origin whose entry into intra-Community trade has not been authorised by the holder of the rights, or which constitute an expression of the will of the Legislator, in the sense that there should be restriction on entry into the European Economic Area of goods where, due to their licit origin, their circulation and resale in the European Economic Area cannot be considered to be an infraction of the industrial property rights recognised by the member countries.

An examination of the SILHOUETTE and SEBAGO decisions reveals that the TJCE did not even consider the possibility of examining the question in the light of the Regulations and it should be stressed that the current Regulation is dated later than the SILHOUETTE decision, though prior to the SEBAGO decision.

Some doubt should therefore be raised as to whether an examination of this specific question by the TJCE could give rise to a change of orientation in its doctrine, similar to that which arose on the occasion of the HAG-I and HAG-II decisions.

2.a)

Can contractual restrictions imposed by the holder of an Industrial Property Right be used to limit the effect of international expiry?

b)

What is the effect of nonfulfilment of the contractual restriction by the buyer. Does expiry then arise?

Both the LP and the LM, when considering the possibility of granting licences, provide for the possibility of granting partial licences, which includes the possibility of geographically limiting the acts of use of the Patent and/or use of the Trademark by the Licensee, and the possibility of the holder of the right acting against a Licensee who breaches any of the limits of his licence (section 75.1 and 2 of the LP and section 42.1 and 2 of the LM).

It should nevertheless be noted that these sections grant the holder of the right remedy against the Licensee, but not against those who might have been able to acquire the products from said Licensee, so that if the latter are third parties who resell the products outside the territory of the licence, then the existence of international expiry is accepted, that of Community expiry is accepted, and such expiry will have arisen upon marketing of the products under the contractual conditions, due to which it will be practically impossible to prevent resale outside of the contractual territory.

In the light of the aforesaid Spanish rules, then, it is clear that the holder of the right can act against the breaching Licensee through the double channel of contractual breach and breach of Industrial Property Right.

On the other hand, the rules do not provide for action against the acquiring third party, in that that is a person outside the contractual agreement and the doctrine of the Spanish Supreme Court stands in the sense that the clauses are binding upon the parties and not upon persons other than those who signed the agreement.

At the level of Community legislation it should be pointed out that the DM (section 7), the RMC (section 22) and the CPC not yet in force (section 42) contain similar provisions, in the sense that they grant remedy to the holders of the rights against Licensees who breach the limitations, amongst them the territorial limitations, of their specific licence agreement.

Taking into account, however, that Community expiry of the rights is undeniable, and that remedy for breach is specifically granted against the Licensees and not against third parties acquiring the goods, it must be understood that expiry will not arise under the hypothesis of the Licensee making direct sales outside the contractual territory, in which case those sales would be actionable through the channel of breach of contract and through the channel of breach of Industrial Property Right.

If the resale outside of the contractual territory arises through a third party, expiry will have occurred.

Also at Community level, it must be borne carefully in mind that there are various Regulations which restrict the contractual freedom of the parties in, for example, technological transfer agreements (Patents and Know-How), franchise agreements, purchasing or exclusive distribution agreements.

These Regulations consider as "black" or competition-restrictive, for example, those which bind the parties or one of the parties to refuse to take orders for supplies placed by the users or resellers or which restrict the possibility of purchasing the products from other resellers in the common market.

Within the European Economic Area, therefore, in so far as concessions of licences must comply with the regulations against restriction of competition, it is practically impossible not only to avoid the effect of Community expiry but the possibility of third parties outside the licence agreement taking supplies from different licensees.

3.a)

If contractual restrictions can be used to limit importation, does it matter whether they are express or implicit?

b)

If the contractual limitations are express, is there any particular marking requirement?

c)

If the products protected are marked to show some marketing restriction, what are the consequences of removal or loss of such marking?

The utility of the contractual restrictions has been set out in the reply to section 2 above.

In any case, it is understood that any restriction must be express, except where it derives from law, which does not appear to happen in these cases.

Neither Spanish nor Community legislation contain requirements regarding marking requirements in the case of express limitations.

Removal or loss of the marking can give rise to actions for breach of contract and, where applicable, for breach of Industrial Property Right, as outlined in the reply to point 2 above, in so far as they can be illicit measures used by the Licensee to go beyond the geographical sphere of his licence.

4.

Does international expiry of industrial property rights arise when a product has been marketed under an obligatory licence?

This query must be answered in the same way as the Spanish Group of the AIPPI did in replying to point 1.4 of question Q 101, in the sense that Spanish legislation does not provide for this specific case.

Applicable to this case is the doctrine established by the TJCE in its decision of 9 July 1985, case 19/84 PHARMON v. HOECHST, in the sense that "sections 30 and 36 of the Treaty of the European Economic Community are no obstacle to application of Member State legislation which grants the holder of a Patent the right to prevent offering for sale in said State of a product which has been produced in another Member State by the beneficiary of an obligatory licence deriving from a parallel Patent owned by the same holder".

Consequently, and according to the doctrine of this decision, where "the parallel product" has been offered for sale pursuant to an obligatory licence, not even Community expiry arises, in that the holder of the Patent for the product in the country of destination of same can oppose marketing of the product.

5.

Is the consent that gives rise to the expiry limited to specific agreements (for example, relation with a subsidiary or affiliated company or an agreement with a Licensee), or is it a matter of the facts of each case?

Despite the fact that Spanish regulations (section 53 of the LP and section 32.1 of the LM) require that the consent of the holder be express, the fact is that those regulations are superseded by Community-level legislation, which does not have the requirement of consent being express.

In principle, it can be taken that determination of whether or not there has been consent by the holder of the rights upon first marketing of the product is a question of fact to be examined in each case, if any dispute arises in relation to it.

Now, the jurisprudence of the TJCE is illustrative on this question.

Thus, for example, in the decision of 22 June 1994, handed down in subject C-9/93 (IDEAL STANDARD decision), it was stated that expiry of the right arises when the holder of a Trademark in the State of importation and holder of a Trademark in the State of exportation are identical or when, even where they are different persons, they have economic links.

The decision lists a number of situations in which an economic link is taken to exist and, especially, a capacity for sole control over the products offered in the market under the Trademark, in different States.

And it adds that "the decisive factor is the possibility of control over the quality of the products and not the effective existence of such control".

That is, according to this decision, as long as a relationship of economic links or of control can be established between two or more companies, the offering for sale (at least within the territory of the European Economic Area) of a product by one of them exhausts the Trademark right over the product.

6.

Can the holder of an Industrial Property Right oppose parallel importation when (a) the goods or (b) their packaging have been modified?

In the case of modification of the goods, the answer is clearly in the affirmative.

In Spanish law, section 32.2 of the LM establishes as an exception to the principle of national expiry the existence of "legitimate reasons" for the holder to oppose subsequent offering of the products, especially when the characteristics of the products have been modified or altered following their marketing.

Section 7.2 of the DM and section 3.2 of the RMC contain similar provisions, so it would seem unquestionable that modification of the goods or products prevents expiry of the right.

The question of whether alteration of the container or packaging also prevents expiry is clearly more debatable.

In the absence of Spanish jurisprudence on the question, we might mention, for example, the decision of the TJCE dated 11 November 1997, subject 345/95, BALLANTINES decision).

In this decision, the Court established doctrine in the sense that "although it does constitute an obstacle to intra-Community trade, the holder of a Trademark right can invoke that right to prevent a third party removing labels and then refitting other labels in which his Trademark figures and which have been placed by the holder himself on products marketed by himself, unless:

it is shown that use of the Trademark right by its holder, for opposing marketing of the products relabelled with that Trademark, would contribute to artificial compartmentalising of markets between Member States;

it is shown that the relabelling cannot affect the original state of the product;

the presentation of the relabelled product is not such that it may damage the reputation of the Trademark and that of its holder, and

the person carrying out the relabelling notifies the holder of that fact prior to marketing of the relabelled products ".

In the specific field of pharmaceutical products, we should mention the decision of the TJCE of 11 July 1996, handed down in case nos. 427, 429 and 436/93, which calls for the following requirements:

Showing that the repackaging of the medicament was necessary, given, for example, that the originator had used different containers or different units for packaging in different countries, which would contribute towards artificial compartmentalisation of the member countries of the E.U.

Certifying that the relabelling did not affect the nature and properties of the original contents of the product contained in the packaging.

Indicating clearly the name of the original manufacturer of the medicament and that of the re-packager.

Preventing the new presentation of the medicament harming the reputation of the originator or of the Trademark.

Notifying the holder of the Trademark of the marketing of the repackaged medicament.

In these decisions a restriction is set on the rights of the parallel importer: the latter may market the product without the consent of the originator, but interfering as little as possible with the rights of the holder.

An additional problem arises in parallel importation when the originator-marketer of the product in the country of importation is different from that of the country in which the parallel importer has acquired the product. In such cases, the TJCE states that if the two products have a common origin by virtue of the fact that both manufacturers have a licensing agreement from the same company and it is found that they have been manufactured by similar (even if not identical) procedures, with the same formulation and the same excipients and that they have the same therapeutic effects, then it can be considered that the parallel importer should not be required to comply with the full requirements of Directive 65/65, but may instead present an abbreviated dossier.

This criterion is nevertheless not clearly defined or established and the very Attorney-General of the TJCE has stated that, in the absence of harmonising regulations in the E.U., each country has the power to decide the level of protection it wishes to require in relation to parallel imports when it is not entirely clear if the imported product is "essentially similar" to that authorised in its own country in relation to its formulation and whether there is any need for the importer to provide efficacy-toxicity information.

7.

Conclusions

At European Union level, it is indubitable that Community Expiry of Industrial Property Rights applies when a product is marketed in any of the Member States.

The question of whether international expiry should be admitted, that is, whether or not the holder of an Industrial Property Right should be permitted to oppose extra-Community parallel imports, is in the last resort a matter of European Union trade policy, which goes beyond the purely juridical consideration of the scope of and limitations on the Industrial Property Rights recognised in the Member States.

Regarding Trademarks, and despite the provisions laid down by the TJCE in the SILHOUETTE and SEBAGO decisions, in the light of the doctrine of the Court itself it does not seem clear that parallel importation affects the essential function of the Trademark of guaranteeing consumers the possibility of identifying the origin of the product.

Also, negation of international expiry permits the holder of a Trademark to divide the market and exploit price differences, as the Swedish government argued in the SILHOUETTE case, which would appear to militate against the interests of consumers.

On the question of Patents, given the nature of the right and its time-period limitation, it would appear more appropriate to apply the principle of territoriality of the rights, which would imply negating international expiry, and to extend such rights in order to prevent extra-Community parallel imports.

In certain sectors, such as the pharmaceutical sector, some States limit the freedom of the holders of the rights in respect of price-fixing, so that in these specific sectors the admission of international expiry of the rights and the resulting permissibility of parallel imports can cause serious financial harm to said holders.

It would therefore be desirable for the States or supranational organisations to establish clear rules regarding parallel imports, although it would not appear to be ideal to regulate them, at least not exclusively, by means of the regulations governing Industrial Property.

Resumen

A nivel de la Unión Europea, es indudable que se produce el Agotamiento Comunitario de los Derechos de Propiedad Industrial con la puesta en el comercio del producto en cualquiera de los Estados miembros.

La cuestión de si debe admitirse el agotamiento internacional, es decir, si debe o no permitirse al titular de un derecho de Propiedad Industrial oponerse a las importaciones paralelas extracomunitarias es, en última instancia, una cuestión de política comercial de la Unión Europea, que va más allá de la cuestión, simplemente jurídica, de cuáles son el alcance y las limitaciones de los derechos de Propiedad Industrial reconocidos en los Estados miembros.

En materia de Marcas, y pese a lo establecido por el TJCE, en las sentencias SILHOUETTE y SEBAGO, habida cuenta la doctrina del propio Tribunal, no parece claro que la importación paralela afecte a la función esencial de la Marca, de garantizar al consumidor la posibilidad de identificar el origen del producto.

Por otra parte, la negación del agotamiento internacional permite al titular de una Marca dividir el mercado y explotar la diferencia de precios, tal como lo argumentó el Gobierno sueco en el caso SILHOUETTE, lo cual puede ser contrario a los intereses de los consumidores.

En materia de Patentes, habida cuenta la naturaleza del derecho y su limitación temporal, parece más adecuado aplicar el principio de territorialidad de los derechos, lo que comporta negar el agotamiento internacional, y extender tales derechos a impedir las importaciones paralelas extracomunitarias.

En sectores determinados, como el farmacéutico, algunos Estados limitan la libertad de los titulares de los derechos en materia de fijación de precios, por lo que en estos concretos sectores, la admisión del agotamiento internacional de los derechos y la consiguiente permisibilidad respecto a las importaciones paralelas puede causar graves perjuicios económicos a dichos titulares.

Sería, pues, deseable que los Estados u Organizaciones supranacionales establecieran normas claras respecto a las importaciones paralelas, si bien no parece idóneo regularlas, al menos exclusivamente, mediante la normativa que rige la Propiedad Industrial.

Résumé

À l'échelle de l'Union Européenne, il y a indubitablement Épuisement communautaire des droits de propriété industrielle dès que le produit est mis en vente dans l'un des États membres.

Quant à savoir si l'on doit admettre l'épuisement international, autrement dit si l'on doit ou non accorder au titulaire un droit de propriété industrielle l'autorisant à s'opposer aux importations parallèles extracommunautaires, il s'agit là, en dernière instance, d'une question de politique commerciale de l'Union Européenne qui va bien au-delà de la question purement juridique de la portée et des limites des droits de propriété industrielle reconnus aux Etats membres.

En matière de marques, et en dépit des dispositions du TJCE, il ne semble pas, si l'on examine les jugements SILHOUETTE et SEBAGO à la lumière de la doctrine du Tribunal lui-même, que l'importation parallèle puisse remettre en question la fonction essentielle de la Marque, à savoir garantir au consommateur la possibilité de repérer l'origine du produit.

Par ailleurs, refuser l'épuisement international permet au titulaire d'une marque de diviser le marché et d'exploiter l'écart de prix, comme l'a d'ailleurs fait remarquer le Gouvernement suédois dans le cadre de l'affaire SILHOUETTE, ce qui peut s'avérer contraire aux intérêts des consommateurs.

En matière de brevets, compte tenu de la nature du droit et de ses limites temporelles, il semble plus approprié d'appliquer le principe de territorialité, ce qui suppose le refus de l'épuisement international des droits et leur extension de manière à empêcher les importations parallèles extracommunautaires.

Dans des secteurs tels que la pharmacie, certains États limitent la liberté des titulaires des droits en matière de fixation des prix, ce qui fait que l'admission de l'épuisement international des droits et la permissivité qui s'en suit quant aux importations parallèles peuvent y occasionner de graves préjudices économiques aux titulaires concernés.

Il serait donc souhaitable que les États ou les Organisations supranationales établissent des normes claires au sujet des importations parallèles, quoi qu'il ne semble pas judicieux de les réglementer, du moins exclusivement, moyennant les règles de la propriété industrielle.

Zusammenfassung

Auf Ebene der Europäischen Union steht außer Zweifel, dass ab der Markteinführung des Produkts in irgendeinem Mitgliedstaat die Erschöpfung der gewerblichen Schutzrechte in der Gemeinschaft beginnt.

Die Frage, ob die internationale Erschöpfung akzeptiert werden soll, das heißt, ob sich der Inhaber von einem gewerblichen Schutzrecht gegen Parallelimporte aus Drittländern wehren soll, ist letztlich eine Frage der Handelspolitik der Europäischen Union, die über die rein rechtliche Frage des Umfangs und der Grenzen von in den Mitgliedstaaten anerkannten gewerblichen Schutzrechten hinausgeht.

Bei Marken erscheint es trotz des Inhalts der EuGH-Urteile SILHOUETTE und SEBAGO unter Berücksichtigung der Lehrmeinung des Gerichtshofs selbst nicht klar, dass die Parallelimporte die wesentliche Aufgabe der Marke beeinträchtigen, nämlich dem Verbraucher die Möglichkeit zur Identifizierung der Produktherkunft zu gewährleisten.

Andererseits ermöglicht die Ablehnung der internationalen Erschöpfung dem Markeninhaber, den Markt aufzuteilen und die Preisdifferenz abzuschöpfen, wie etwa die schwedische Regierung im Fall SILHOUETTE argumentierte, was gegen die Verbraucherinteressen gerichtet sein kann.

Bei Patenten erscheint es unter Berücksichtigung der Art des Rechts und dessen zeitlicher Begrenzung eher angebracht, das Prinzip der Territorialität auf diese Rechte anzuwenden, was die Ablehnung der internationalen Erschöpfung und das Ausdehnen dieser Rechte zur Verhinderung von Parallelimporten aus Drittstaaten bedeutet.

In bestimmten Branchen wie der Pharmabranche beschränken manche Staaten die Freiheit der Inhaber der Rechte bei der Preisbildung, weshalb in diesen konkreten Sektoren die Anerkennung der internationalen Erschöpfung und die daraus folgende Zulassung von Parallelimporten diesen Inhabern schwere wirtschaftliche Schäden verursachen kann.

Es wäre deshalb wünschenswert, dass die Staaten oder die länderübergreifenden Organisationen klare Bestimmungen in Bezug auf die Parallelimporte festlegten, obwohl diese Regelung zumindest nicht ausschließlich über die Bestimmungen über die gewerblichen Schutzrechte erfolgen sollte.