## Facts

- Zino Davidoff SA owned EEA trade mark registrations for “COOL WATER” and “DAVIDOFF COOL WATER” covering perfumes and toiletries.
- Davidoff entered a distribution arrangement for sales outside the EEA (including Singapore), governed by German law.
- A & G Imports Ltd acquired genuine Davidoff-branded goods from the Singapore source and imported them into the United Kingdom (within the EEA) for resale outside Davidoff’s authorized network.
- Davidoff sued to stop the EEA marketing, asserting its EEA trade mark rights were not exhausted because it had not consented to EEA placement of the goods.
- The UK High Court stayed the case and sought a preliminary ruling on the meaning of “consent” for exhaustion under Article 7(1) of the Trade Mark Directive.

## Issues

1. Whether “consent” in Article 7(1) is a uniform EU-law concept or may be determined by national contract law (including a contract’s choice-of-law clause).
2. Whether consent to marketing goods outside the EEA can amount to consent to their subsequent marketing within the EEA, and under what conditions consent may be implied.
3. Whether consent may be presumed from silence, lack of contractual prohibitions, absence of “not for EEA” notices, or failure to prevent parallel trade.

## Decision

- The court held that “consent” for Article 7(1) exhaustion is an autonomous EU-law concept requiring uniform interpretation.
- Placement of goods on a non-EEA market does not exhaust EEA trade mark rights; exhaustion occurs only if goods are placed on the EEA market by the proprietor or with its consent.
- Consent must be positively demonstrated; it may be implied only where facts and circumstances unequivocally show the proprietor agreed to EEA marketing.
- Consent cannot be inferred from the proprietor’s silence or lack of opposition.
- No presumption of consent arises from the absence of contractual export bans, the absence of “not for EEA” labels, or a failure to take steps against parallel imports.
- The burden of proving consent rests on the importer asserting exhaustion; the case was remitted for application of these standards.

## Legal Principles

- EEA trade mark exhaustion is limited to goods first placed on the EEA market by the proprietor or with the proprietor’s consent; international exhaustion is not permitted under the Directive framework.
- “Consent” operates as a relinquishment of the proprietor’s right to control first EEA marketing and is therefore construed strictly.
- Implied consent is possible only where the proprietor’s conduct and the surrounding circumstances unequivocally demonstrate agreement to EEA marketing.
- Silence, inaction, or the absence of contractual/physical restrictions on re-importation cannot by themselves establish consent.
- The party relying on exhaustion bears the burden to prove the proprietor’s express or unequivocally implied consent to EEA marketing.

## Conclusion

The court required clear proof—express or unequivocally implied—that the trade mark owner agreed to EEA marketing before exhaustion can defeat infringement claims, rejecting any presumption of consent based on silence, missing export controls, or non-EEA first sale.


Zino Davidoff SA v. A & G Imps. Ltd., Joined Cases C-414/99 to C-416/99, 2002 E.T.M.R. 9 (C.J. 2001)