Compatibility of the Industrial Property restrictive
effects with the freedom of trade and competition required by the
A predictable tension with the territoriality of the
Industrial Property rights (DPI) derives from the process of
European construction and consolidation of the Community
The issue driving to the analysis is shown by the fact
that the freedom of trade and competition, values assigned to the
European Union, collide with the monopoly at national scale
conferred by the DPI. The simple exercise of exclusive
rights could, potentially, hinder the free movement of goods within
As a way of solving the exposed dichotomy, there is the concept
of exhaustion of rights. This rule was developed by the case law of
the European Union Court of Justice and, thereafter, transposed to
the laws of the Member States. The national Legislation expressly
provides the exhaustion of rights through its inclusion under
various Articles throughout the Portuguese Industrial Property
The exhaustion of rights doctrine establishes that the holder of
a specific DPI, or someone with his/her consent, by placing a
product under his/her monopoly on the market, exhausts the
exclusive right, concerning the referred product in the European
economic area. Thus, the goods are no longer in that legal sphere
and may be even sold elsewhere.
Together with the exhaustion of DPI's, the concept of
parallel imports is often mentioned. This is an import made beyond
the official distribution circuit of a product. The person, who
does this, is a third party different from the product manufacturer
and distributers. The parallel importer purchases goods in a market
where they are cheaper and places them in another market for a more
expensive resale. It should be noted that the products sold by
parallel imports are genuine. The importer is not a
Parallel imports, according to the European Commission and the
Court of Justice, are beneficial to the European Economic Area,
seeing that they balance the market prices of the different Member
The territorial scope of the exhaustion should also be referred.
The Portuguese legislator has chosen to apply the exhaustion of
rights only to the scope of the European Economic Area. But, it is
worth noting that, although there cannot be exhaustion in brands at
international level, with regard to patents, it is up to each
Member State to choose whether or not to accord the exhaustion of
rights to third counties in the European Economic Area.
Is the exclusive or monopoly right of the product
completely derogated when it is exhausted?
The exhaustion of right is not absolute. The DPI is not
extinguished by itself, and it only ceases regarding the products
that were specifically placed on the market. Any remaining goods,
not yet sold, belong exclusively to the DPI holder.
After placing the product on the market, and the exhaustion
thereof, other rights still remain with the DPI holder. The
Portuguese Industrial Property Code excludes the principle of
exhaustion of the brand right "whenever there are legitimate
reasons, especially when the condition of those goods is changed or
impaired after being placed on the market".
Does the prevalence of the Exhaustion of right in the
European Economic Area favour the market?
A uniquely Portuguese worldview is likely to lead us to reply
that it would be more fruitful to Portugal to increase parallel
imports and, consequently, the introduction of international
If on one side, and with regard to brands, the European
legislative harmonization compels us to stick with the European
exhaustion, as far as patents are concerned there remains the
possibility of incorporating the international exhaustion concept
in the legislation.
We shall have to wait for developments in the European political
and economic situation to inquire if the trend will continue to be
the European economic peer protectionism and the subsequent
changelessness of the Exhaustion of right rule or if it will
acquire a universal character.
¡Ven a vernos a la Conferencia Anual de INTA 2017 en Barcelona!
Nuestros expertos de América Latina, España y Portugal estarán encantados de reunirse con vosotros para tratar cualquier asunto relacionado con la gestión de la cartera de Propiedad Industrial e Intelectual.
Nos encontraréis en el Hotel Santos Porta Fira desde el domingo 21 de mayo hasta el martes 23 de mayo en la sala Europa ubicada en la planta 24th. Estamos a 5 minutos del Recinto Ferial Fira Gran Vía.
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