Exploiting the principle of exhaustion

Repackaged original products cannot be easily named as counterfeit, and require special attention compared with mere trademark infringement actions, since the counter party has some strong defences, such as parallel imports and exhaustion of trademark rights, to avoid trademark claims.

According to article 61 of the Decree Law No. 556 on the Protection of Trademarks, the following shall be considered infringement:

a) A violation of article 9;

b) The use of the same or confusingly similar trademark without the consent of its proprietor;

c) Where the party was aware or should have been aware that a mark is plagiarised, or sells, distributes, puts to commercial use, imports or keeps in possession goods carrying the infringed trademark for these purposes;

d) The transfer to third parties or expansion of rights acquired by a licensing contract;

e) The participation in, assistance with, or encouragement or facilitation of the acts referred to in subparagraphs (a), (b) and (c); and

f) Abstaining from explaining where and how the product carrying the registered or confusingly similar trademark was obtained when found in possession.