Recent developments in European parallel import jurisprudence

Recent EU jurisprudence in the area of parallel imports may bring substantial changes in terms of how this problem is approached in national proceedings of Member States. Consequently, we may be on the verge of dynamic shifts in business models and brand protection strategies on the European market.

Parallel imports and exhaustion of trademark rights

A key aspect in parallel import cases is the consent of the trademark proprietor, which may be either express or implied, but it cannot be presumed (Joined Cases C-414/99 to C-416/99 Zino Davidoff and Levi Strauss [2001] ECR I-869 paras. 46, 54 and 58). While the jurisprudence has been clear that the burden of proof as to the trademark owner’s consent lies with the trader who alleges that it existed (see Zino Davidoff and Levi Strauss, para. 54), in some cases it can be shifted to the trademark proprietor, i.e. when leaving the burden of proof with the trader would allow the proprietor to partition national markets and thus assist the maintenance of price differences between Member States (see Van Doren + Q, C‑244/00, EU:C:2003:204, paras. 37 and 38, Schweppes, C‑291/16, EU:C:2017:990, paras. 52 and 53, e.al.). The real risk of partitioning of national markets may occur in particular in cases of an exclusive distribution system (see Van Doren, para. 39).

New approach

These fundamentals have been stable for years, but recently the CJEU updated its assessment – due to two preliminary referrals from the District Court in Warsaw. The first formed basis for the ruling of 17 November 2022, Harman International Industries Inc. v AB S.A., C‑175/21, EU:C:2022:895, and the second for the ruling of 18 January 2024, Hewlett Packard Development Company LP v Senetic S.A., C‑367/21,EU:C:2024:61. Both offer more detail on shifting the burden of proof in parallel import cases than previous jurisprudence.

Harman: a balancing act

In Harman case, the main question was whether it’s necessary to shift the burden of proof from the trader to the trademark proprietor if, without access to trademark proprietor’s database, it is objectively impossible for the trader to demonstrate that products it purchased had been placed on the market in the EEA by the trademark proprietor or with its consent – even where no exclusive distribution is established.

To this question the Court gave an affirmative answer, provided that the adjudicating body finds, depending on the specific circumstances relating to the marketing of the products concerned, that the rule on the burden of proof would allow the trademark proprietor to partition national markets and thus would assist the maintenance of price differences between Member States (see Harman, para. 72). The Court also made a reference to the opinion of the Advocate General, affirming his view. It’s useful to quote the relevant part of the opinion:

If no exclusive distribution is found to exist, the modification of the traditional rules of evidence could be allowed in proceedings for infringement of an exclusive trade mark, depending on the specific circumstances in which the goods are marketed. If there is no indication on the goods of where they were first put on the market, the court – having determined that there are no practical remedies that can overcome that evidentiary problem – will modify the burden of proof in accordance with the abovementioned principle of effective judicial protection (Opinion of Advocate General Pitruzzella delivered on 16 June 2022(1), Case C‑175/21, Harman International Industries, Inc. v AB SA, EU:C:2022:481, para. 90).

Attorney General further says that The investigation to be carried out by the national court will seek to verify that the defendant is not in a situation of ‘probatio diabolica’, because the factual elements that can demonstrate the exhaustion of the trade mark right are completely outside its sphere of influence and knowledge (Harman, Opinion of AG Pitruzella, para. 91) and that just because it is difficult for the defendant to obtain information from its supplier, that cannot be the only factor justifying the modified burden of proof (Harman, AG Opinion, para. 92). So, in absence of established exclusive distribution system, shifting the burden of proof can occur only if it’s practically impossible for the defendant to provide evidence that disputed goods were put on the market with trademark proprietor’s consent (Harman, AG Opinion, para. 93).

This author is of the opinion that, due to the reference present in the Harman judgment, it is crucial to consider the opinion of the Attorney General as further guidance in assessing prerequisites for shifting if the burden of proof, in the absence of an established exclusive distribution system.

Hewlett Packard: a step too far?

In Hewlett Packard, the CJEU faced similar questions, and, while it relied heavily on the Harman judgment, it contained important new elements – such as the finding of the referring court that the defendant was assured by its suppliers that disputed goods can be legally marketed within the EEA, and that the trademark owner refused to carry out verification of the goods’ intended destination market at the defendant’s request.

CJEU lists a number of conditions which are to be met to allow adjusting the burden of proof (see Hewlett Packard, paras. 61, 67). This may occur if trademarked goods:

1. do not bear any marking enabling third parties to identify the market on which they are intended to be marketed;
2. are distributed through a selective (not exclusive) distribution network whose members may resell them only to other members of that network or end users;
3. were purchased by the defendant after having obtained an assurance from the sellers that they could be marketed legally within the EEA; and
4. the proprietor of that trade mark refuses to carry out verification of the intended market at the purchaser’s request.

While there are four prerequisites, many businesses which are interested in combating parallel imports do use selective distribution networks, and nearly none use any markings that would allow a third party to identify the intended destination market. At the same time, most suppliers, including dishonest ones, would assure their customers that the goods they are selling are perfectly legal and may be marketed within the EEA.

This underlines the importance of the final condition: trademark owner’s the refusal to confirm the intended market. If the owner wishes the burden of proof to remain with the purchaser of the goods, they should carefully respond to each seller request to verify whether the goods they possess can be legally marketed within the EEA. It’s hard to miss that if the trademark owner becomes effectively obliged to fulfill each such request, he may become overburdened with unnecessary administrative work.

First national decisions

On April 16, 2025, the District Court of The Hague issued a ruling in Coty Beauty Germany GmbH v Easycosmetic Benelux B.V. case, in which the facts resembled Harman and Hewlett Packard. Main point is that Coty had voluntarily provided evidence of first marketing of disputed products, which led the court to conclude that the burden of proof has been satisfied – without actually deciding on which party it ultimately rested (specifically because Easycosmetic ceased to dispute that products in question were first put on the market outside the EEA). Importantly, the court accepted Coty’s internal documents as reliable, despite objections from Easycosmetic.

This could be the first known application of the Hewlett Packard doctrine by a trademark owner, although the evidence was provided only after court proceedings started. Nevertheless, it underlines the importance of traceability and proactive approach in parallel imports disputes.

Conclusion

Taking all of the above into account, it seems that while recent judgments in the area of parallel imports may not have brought revolutionary changes, they already seem to exert significant influence on enforcement strategies, while business practices and brand protection strategies are likely to follow suit. While elements of Harman may be seen as restoring balance between trademark owners and defendants, Hewlett Packard seems to push it even more in favor of the latter.

In this author’s view, when it comes to decisions regarding shifting the burden of proof, the test proposed in Harman, and specifically in the opinion of the Advocate General Pitruzella, seems more objective and reasonable, and in line with the reality of conducting business activity within the European Union.

The author has represented Harman International Industries, Inc. before the CJEU in the C‑175/21 case.