Are gray imports or parallel imports illegal?

Illegal gray imports or parallel imports: (no) exhaustion under trademark law

Exhaustion under trademark law:

The trademark owner has the right to prohibit third parties from using his trademark. However, this right expires if the branded products by the trademark owner or with his consent in the European Economic Area (EEA) have been placed on the market. This is referred to as the Exhaustion of trademark rights. Goods purchased outside the EEA are not subject to exhaustion in the European Single Market.

Examples:

a) Original BMW spare part from China:

A German company imports an original BMW spare part from Chinawhich is significantly cheaper there. Since BMW has not consented to the marketing of the spare part from China in Germany, there is no exhaustion. The import and sale of the spare part in Germany therefore infringe the trademark rights of BMW.

b) Perfume from the USA:

An online retailer imports perfume of a well-known brand from the USA and sells it in Germany. Here, too, there is no authorization for marketing in Germany, which is why the retailer commits a trademark infringement.

c) Sporting goods from a non-EEA country:

A retailer imports sports goods of a well-known brand from a non-EEA country, e.g. Turkey. The trademark owner has not consented to the marketing of the Turkish goods in the EU. The import and sale of the goods in Germany is therefore illegal. This applies even if the goods were produced in the EEA.

Gray imports are mostly illegal

Grey imports therefore usually constitute trademark infringements, even if they are "original parts". We understand that this feels unfair. However, it is in line with current law and will not change in the foreseeable future.

Consequences of illegal gray imports (parallel imports):

• Warning letter from the trademark owner with a request to submit a cease-and-desist declaration
• Injunction
• Claim for damages
• Confiscation and destruction of the goods
• Criminal proceedings

Avoidance of illegal gray imports (parallel imports):

• Careful examination of the origin of the goods
• Purchase of products only from authorized dealers
• Pay attention to information on the product or packaging
• If in doubt, ask the trademark owner

Conclusion:

Grey imports (parallel imports) can be an attractive offer for retailers and customers. However, it is important to observe the legal framework in order to avoid trademark infringements and the associated consequences. Under no circumstances is it sufficient to ensure that the goods really originate from a specific brand "X" if the product is purchased outside the EEA.

marken medien meyen - Your lawyers for trademark law and competition law:

We advise and represent you in all matters relating to trademark law and competition law. We support you in avoiding illegal gray imports (parallel imports) and help you to defend your rights against trademark owners in the event of warning letters.

Please contact us for a free initial consultation in the event of warnings due to imports.