Exhaustion of Rights Principle in the European Union not Necessarily Applicable to Parallel Imports

Rainbow S.p.A. is the owner of a trademark registration for “Winx CLUB” used for video and audio productions, cartoons as well as a number of collateral goods intended for merchandising purposes. An exclusive licence was granted to a Dutch company to use the trademark “Winx CLUB” for specific stationery goods to be approved by the licensor and to be marketed on the Dutch market only.

The respondent Accademia S.r.l. started marketing in Italy stationery goods purchased from the Dutch licensee rather than the Italian exclusive licensee. The goods imported by Accademia into Italy did not comply with the specifications imposed to the Dutch licensee and included i.a. school diaries in Italian (rather than Dutch).

The Bologna judge in his order rejected the arguments of the respondent based on exhaustion of rights. The judge held that this was not a case of admissible “parallel importation” since the goods manufactured in Holland and imported into Italy by the respondent were marketed without the consent of the trademark owner. The judge also found that the imported goods involved a copyright infringement with respect to the rights of the petitioner to the characters reproduced on the imported goods. The imported goods were seized and a penalty was imposed on the respondent for any further act of infringement and for any day of delay in complying with the seizure order.

Tribunal of Bologna – Order of 8 September 2006 in re Rainbow S.p.A. vs. Accademia S.r.l.