If the exhaustion of trademark rights is a defence in trademark litigation, who has the burden of proof that the goods are originals?
The legal intricacies and diverse sets of facts connected with the exhaustion defence are widely seen as presenting some of the most difficult problems in trademark litigation. Some clarification comes from two decisions by Germany’s Federal Supreme Court in March 2012 concerning the alleged infringement of the Converse trademarks, where the defendants claimed that the trademark rights were exhausted.
In the first case—Converse I—the defendant claimed that the attacked sports shoes were originals. For that kind of situation, the Federal Supreme Court had already decided in earlier cases (Stüssy I and Stüssy II) that the defendant has the burden of proof for the contention that the attacked products are not counterfeits, because if the products are counterfeits it can be assumed that their distribution lacks the approval of the trademark owner.
According to earlier decisions by the European Court of Justice (eg, Van Doren) and the Federal Supreme Court in the Stüssy II case, European law demands an exception to this rule: if the defendant’s obligation to prove that the products are not counterfeits would enable the plaintiff to ‘wall off’ the national markets, the plaintiff has the burden of proof that the products are not original.
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trademark rights, Converse, German Federal Supreme Court
