CASELEX:EU:2009:120 – IP Law – Exhaustion of trade mark proprietor’s rights

This reference for a preliminary ruling was made by the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) (Netherlands) in proceedings between the applicants, Makro Zelfbedieningsgroothandel CV (‘Makro’), Metro Cash & Carry BV and Remo Zaandam BV, on the one hand, and the defendant, Diesel SpA (‘Diesel’), on the other hand, with regard to the marketing by Makro of shoes bearing a trade mark owned by Diesel, without Diesel’s express consent.

Diesel is the proprietor of the word mark Diesel, following registration of that mark for the Benelux countries. 

Distributions Italian Fashion SA, established in Barcelona (Spain) (‘Difsa’), was the distributor of goods bearing the Diesel trade mark in Spain, Portugal and Andorra. 

On 29 September 1994, Difsa entered into an exclusive distribution agreement with the Spanish company Flexi Casual SA (‘Flexi Casual’), under which Flexi Casual was granted exclusive selling rights in Spain, Portugal and Andorra in respect of a number of goods, including shoes, bearing the word mark Diesel. Under Article 1.4 of the contract, Flexi Casual was permitted to conduct ‘market tests’ on the shoes bearing the mark Diesel, by offering such footwear for sale to its customers in the geographic areas in question, with a view ‘to reliably determining market requirements’. 

On 11 November 1994, Difsa therefore granted to Flexi Casual a licence authorising it to manufacture and distribute shoes of its own design in order to test the market, so that those goods could be offered to Diesel for distribution or for the ‘assignment of the manufacturing licence’. 

On 21 October 1997, a manager of Flexi Casual wrote to Cosmos World SL (‘Cosmos’) granting it a licence to manufacture and sell shoes, bags and belts bearing the Diesel trade mark. Thus, under that agreement, but without express approval of any kind by Difsa or Diesel, Cosmos manufactured and marketed shoes bearing that mark. 

During the summer of 1999, Makro offered for sale shoes bearing the word and figurative mark Diesel acquired by two Spanish undertakings which had bought them from Cosmos. 

Thus, on 26 October 1999 Diesel, claiming that it had never consented to the marketing of the shoes in question by Cosmos, brought an action before the Rechtbank te Amsterdam (Amsterdam District Court) against Makro and against one of Makro’s partners, Deelnemingmij Nedema BV, seeking, inter alia, termination of the infringement of its copyright and of its rights as proprietor of the trade mark in question, together with damages for the loss suffered by it.