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The meaning of consent

Written by Michael Coyle on 17 April 2016

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The issue of consent was rehearsed in Zino Davidoff SA v A&G Imports Ltd (Joined Cases C-414 to 416/99) [2002] Ch 109 the Court of Justice considered 'consent' within the meaning of art.7 of Directive 89/104/EEC ('the Trade Mark Directive') but indicated that the same considerations applied in relation to all of arts. 5 to 7 of the Trade Mark Directive, equivalent to arts. 9, 12 and 13 of the Trade Mark Regulation:

"[39] Articles 5 to 7 of the Directive embody a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the Community: Silhouette [1999] Ch 77, 97, 98, paras 25 and 29.
[40] Article 5 of the Directive confers on the trade mark proprietor exclusive rights entitling him, inter alia, to prevent all third parties 'not having his consent' from importing goods bearing the mark. Article 7(1) contains an exception to that rule in that it provides that the trade mark proprietor's rights are exhausted where goods have been put on the market in the EEA by the proprietor or 'with his consent'.
[41] It therefore appears that consent, which is tantamount to the proprietor's renunciation of his exclusive right under article 5 of the Directive to prevent all third parties from importing goods bearing his trade mark, constitutes the decisive factor in the extinction of that right.
[42] If the concept of consent were a matter for the national laws of the member states, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned. The objective of 'the same protection under the legal systems of all the member states' set out in the ninth recital in the Preamble to Directive 89/104, where it is described as 'fundamental', would not be attained.
[43] It therefore falls to the court to supply a uniform interpretation of the concept of "consent" to the placing of goods on the market within the EEA as referred to in article 7(1) of the Directive.

[45] In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated.
[46] Such intention will normally be gathered from an express statement of consent. Nevertheless, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights.
[47] The answer to the first question referred in each of Cases C-414/99 to C-416/99 must therefore be that, on a proper construction of article 7(1) of the Directive, the consent of a trade mark proprietor to the marketing within the EEA of products bearing that mark which have previously been placed on the market outside the EEA by that proprietor or with his consent may be implied, where it is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his right to oppose placing of the goods on the market within the EEA."

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