Background
A coffee manufacturer established in Turkey sells Turkish coffee both in Turkey and (via a distributor) in the EU. It owns, among other rights, an internationally registered figurative mark extended to the EU and a German figurative mark—both covering “coffee”.
A German food wholesaler imported coffee produced by the claimant, which had been placed on the market in Turkey, into Germany and supplied it to retailers. The trade mark owner alleged infringement and sought injunctive relief and follow-on claims (including information, accounts, a declaratory judgment on damages, and warning letter costs). The lower courts largely upheld the claims; the appeal on points of law was unsuccessful.
Decision
The BGH held: Exhaustion under Art. 15(1) EUTMR arises only where goods bearing the EU trade mark have been placed on the market in the EEA with the proprietor’s consent. Placing goods on the market outside the EEA—here, in Turkey—therefore does not exhaust the right, and the proprietor may prohibit importation into the EEA without consent.
The EEC–Turkey association framework (Additional Protocol) and Association Council Decision No. 1/95 do not lead to a different outcome. While limiting exhaustion to the EEA is a measure having equivalent effect to an import restriction, it is justified for the protection of industrial and commercial property (inter alia Art. 29 Additional Protocol; Art. 7 Decision No. 1/95).
The BGH also relied on the understanding that the parties did not intend to grant Turkey a special position compared to other non-member states with regard to exhaustion; it referred, among other points, to the fact that Decision No. 1/95 itself does not provide for exhaustion in trade relations (Art. 10(2) of Annex 8).
Practical note
For manufacturers, trade mark owners, importers and retailers, the decision provides clear guidance for parallel/grey imports:
Importing original goods from Turkey (or other non-EEA states) into the EEA cannot be justified by exhaustion merely because the goods are genuine and originate from the proprietor. Conversely, the judgment strengthens proprietors’ ability to control first placing on the market within the EEA—particularly in international supply chains, where price differentials and distribution strategies matter.
To the point
- Placing goods on the market in Turkey does not exhaust EU trade mark rights in the EEA.
- Exhaustion under Art. 15 EUTMR requires placing on the market in the EEAwith consent.
- The EEC–Turkey association agreement does not extend the territorial scope of exhaustion.
- The limitation is justified as an IP/trade mark protection measure.
- Highly relevant for parallel imports/grey imports and cross-border distribution planning.
Source: Rewis