Page 44 - วารสารกฎหมาย ศาลอุทธรณ์คดีชํานัญพิเศษ

วารสารกฎหมาย ศาลอุทธรณ์คดีชำานัญพิเศษ

need to include the adoption of one of two possible approaches on IP exhaustion: either
a system of regional or international exhaustion, applied consistently (1) by all country

members of the free trade area or regional organization, or (2) for all types of IP rights
to prevent IP owners leveraging restrictive provisions on one type of rights when multiple

rights can be used to protect a product (or different part of it).
In this context, the process of market integration of the EU (which today extends

to the European Economic Area, EEA) can be taken as a useful example. EU/EEA
Members decided to harmonize their national policies on exhaustion and adopted similar

standards to remove any disguised barriers to effective intra-EU/EEA trade. The only
126
ways to supersede this principle are very serious concerns relating to health, security,
or public policy in member countries. Several leading cases by the ECJ (and later
127
CJEU) assisted in settling uncertainties, and in most instances, the CJEU prioritized
the free movement of goods versus the exercise of IP rights. Nevertheless this full-
128
force integration of markets does not extend beyond the territory of the EU/EEA. EU/

EEA Members decided to adopt regional exhaustion, therefore genuine products coming
from outside the EU/EEA can be legally stopped at the will of trademark owners as
trademark infringement. 129

126 Article 34 of the Consolidated Version of the Treaty on the Functioning of the European Union, Mar.
30, 2010, 2010 O.J. (C 83) as amended following the entering into force of the Treaty of Lisbon on December 1,
2009. Treaty of Lisbon, Dec. 13, 2007, 2007 O.J. (C 306) [hereinafter TFEU], states that ““[q]uantitative restriction
on imports and all measures having equivalent effect shall be prohibited between Member States.” This principle
supersedes the general principle in Article 36, according to which, European Union (EU) members can prohibit or
restrict “imports, exports or goods in transit” based upon “the protection of industrial and commercial property.” Art.
36, TFEU. Moreover, the prohibition under Article 36 “shall not . . . constitute a means of arbitrary discrimination
or a disguised restriction on trade between Member States.” Id.
127 See discussion supra Part II.
128 Apostolos G. Chronopoulos & Spyros M. Maniatis, Trademark Exhaustion and its Interface with EU
Competition Law, in Research Handbook on Intellectual Property Exhaustion and Parallel Imports 367 (Irene Calboli,
Edward Lee eds., 2016); Guido Westkamp, Exhaustion and the Internet as a Distribution Channel: the Relationship
Between Intellectual Property and European Law in Search of Clarification, in Research Handbook on Intellectual
Property Exhaustion and Parallel Imports 367 (Irene Calboli, Edward Lee eds., 2016).
129 See, e.g., Carl Steele, “Fortress Europe” for Trademark Owners, 1998 trademark WorLd 14 (Aug.
1998) (summarizing the relevance of the ECJ’s decision in Silhouette in creating a closed trading block among
member countries).

42