ANTI-COUNTERFEITING & PARALLEL TRADE TEAM
Parallel Imports
Select Country
Argentina
Argentina
Armenia
Austria
Belarus
Bolivia
Brazil
Bulgaria
Canada
Chile
China
Colombia
Costa Rica
Czech Republic
Dominican Republic
Ecuador
El Salvador
Germany
Greece
Honduras
Hong Kong
Hungary
India
Ireland
Kazakhstan
Kyrgyz Republic
Malaysia
Mexico
Netherlands
New Zealand
Nicaragua
Norway
Panama
Paraguay
Paraguay
Peru
Puerto Rico
Romania
Russia
Russia
Singapore
South Korea
Spain
Sweden
Switzerland
Taiwan
Thailand
Turkey
UK
Ukraine
Uruguay
Venezuela
Venezuela
Argentina
Region
MARQUES member
International
Expressly included in the Argentinian trademark law
Regional
Trade mark infringement
No
Other claim
N/A
Defences
Goods are genuine
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Argentina
Region
MARQUES member
Gustavo Giay
International
Not expressly included in the law but created by case law.
Regional
Trade mark infringement
No
Other claim
N/A
Defences
Goods are genuine
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
The case in which parallel imports were considered valid was "Precisa Argentina S.R.L. v. Missé Esteban et al", issued by the Supreme Court decision dated April 28th, 1958.
Armenia
Region
The Eurasian Economic Union (EEU)
MARQUES member
International
No.
Regional
Yes.
The members of the Eurasian Economic Union discuss an implementation of exclusions from the regional exhaustion principle for several kinds of goods like medical devices, vehicle spar parts, cosmetics.
Trade mark infringement
Yes.
Other claim
No.
Defences
Criminal sanctions
Yes, but very unlikely in practice.
Customs
Yes, if the trademark has been included in the Customs Register of Intellectual Property of Armenia upon application of the trademark owner. During the 10-day detention period the trademark owner should inform the customs authorities that a claim has been
Damages
Yes.
Account of profits
Yes, in addition to damages the claimant can seek an account of the profits made by the defendant as a result of the infringement.
Injunction?
Yes, based on a court order an injunction may be granted to suspend the parallel import of goods, to prohibit the sale of goods.
Significant case law
N/A
Austria
Region
EU
MARQUES member
Martin Reinisch
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Yes but not likely in practice
Customs
No
Damages
In general one is entitled to a compensation; if the infringer acted on fault damages including the payment of loss of profits (which is difficult to prove) can be claimed.
Account of profits
Instead of damages or a compensation, one can claim payment of the net profit made.
Injunction?
Injunction can be sought to secure cease and desist claims, whereby it is not necessary to establish that the claim/enforcement would otherwise be jeopardised). Injunction to secure claims on payment of compensation, payment of damages, payment of net pro
Significant case law
Belarus
Region
The Eurasian Economic Union (EEU)
MARQUES member
International
No.
Regional
Yes.
The members of the Eurasian Economic Union discuss an implementation of exclusions from the regional exhaustion principle for several kinds of goods like medical devices, vehicle spar parts, cosmetics.
Trade mark infringement
Yes.
Other claim
No.
Defences
Civil proceedings.
Criminal sanctions
No.
Customs
Yes, if the trademark has been included in the Customs Register of Intellectual Property of Belarus upon application of the trademark owner. When a customs office detects the import of products bearing registered trademarks by unauthorized importers, it s
Damages
The rightholder has an option to claim damages for the losses. This claim may face difficulties as to the appropriate amount of losses, in particular, where the trade mark owner is not the entity effecting sales in Belarus and a separate related entity ma
Account of profits
No.
Injunction?
Yes, the rightholder may apply for a permanent injunction to refrain from dealing with goods bearing the trade mark, if the goods have not been put on the market in the EEU by the rightholder or upon its consent.
Significant case law
N/A
Bolivia
Region
Latam
MARQUES member
Virginia Cervieri
International
Yes (through article 158 of Andean Community Decision 486)
Regional
No
Trade mark infringement
No
Other claim
In the case there is illegality or infringement, for then acting against the responsible.
Defences
Infringer needs to prove that the goods were acquired from the rightholder or any authorized source.
Criminal sanctions
Parallel importations are not criminalized by law.
Customs
No
Damages
No
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Brazil
Region
MARQUES member
International
Expressly included in the Brazilian trademark law
Regional
Trade mark infringement
Yes
Other claim
N/A
Defences
Although goods may be geniune, the consent of the trademark owner is required for them to be imported
Criminal sanctions
N/A
Customs
"informal" support from Customs is available by request of the Courts
Damages
Yes
Account of profits
Injunction?
Significant case law
Bulgaria
Region
EU
MARQUES member
Elena Miller
International
No
Regional
Yes- EEA
Trade mark infringement
No
Other claim
Initiation of a civil claim for unjust enrichment under the Law on Liability and Contracts, or a claim under the Law on Marks and GIs BUT on the gorunds that the rightowner did not avial a license or did not assign the mark
Defences
Goods are genuine
Criminal sanctions
No
Customs
No
Damages
No damages can be claimed against the importer of parallel goods,unless there are legitimate reasons for the proprietor to oppose further sale, especially where the condition of the goods is changed or impaired after they have been put on the market OR th
Account of profits
No
Injunction?
Injunction may be claimed against the importer of parallel goods, when there are legitimate reasons for the proprietor to oppose further sale, especially where the condition of the goods is changed or impaired after they have been put on the market.
Significant case law
Interpretive Decision No. 1/2012 of the Supreme Cassation Court and Decision No. 89/29.07.2016 of the Supreme Cassation Court
Canada
Region
MARQUES member
International
No
Regional
No.
Trade mark infringement
Generally no, but a claim of infringement or passing-off is possible by the trade mark owner (e.g. not the licensee) if there is a material difference between the "genuine" and grey goods (e.g. manufactured according to different formulations, standards of quality or health/safety standards) and and the source of goods is different, such that the grey goods arguably would be passed off as being the same as the authorized goods bearing the trade mark.
A claim of passing-off is also possible if the goods are genuine and there is no notice that the warranty offered is different from the genuine goods in Canada (e.g. if the grey marketer does not point out the differences between the products).
Other claim
Depending on the facts, the following may be available:
(1) Secondary copyright infringement for goods bearing labels or trade marks subject to copyright of a Canadian copyright owner. This is usually the strongest claim. However, the nuances of using copyright to resist importation of grey goods has not been fully explored by Canadian courts.
(2) s. 27.1 of the Copyright Act for the parallel importation of books.
(3) Tort of unlawful interference with economic relations. But this requires
an "unlawful conduct" - namely, violation of the criminal provisions in legislative pieces.
(4) Complaints to regulatory bodies, namely:
(a) Complaints to the Competition Bureau for false or misleading statements such as under the Competition Act or s. 7(a) and (d) of the Trade-marks Act (e.g. the original manufacturer has "authorized" the sale of a regulated or exclusive product; that the grey goods are legitimately obtained).
(b) Complaints regarding Packaging Labelling laws and Quebec Charter of the French Language if the packaging is not in compliance with these laws.
(c) If it is a regulated product, there may also be options for non-compliance with food, beverage and health regulations.
Defences
No square defence to a claim of importing or distributing grey goods.
Note: If passed as law, Canada's bill for its new Combating Counterfeit Products Act creates excepts certain actions from criminal sanctions, including importation of parallel imports.
Criminal sanctions
Consider reporting to the Royal Canadian Mounted Police (RCMP), who will often investigate and enforce on grey good & counterfeit matters.
Customs
No
Damages
N/A for trade mark infringement.
(NOTE: would be available for claims based on other breaches of the Trade-marks Act (e.g. depreciation of goodwill, passing off, false or misleading representations, etc. discussed earlier).)
Account of profits
N/A for trade mark infringement.
(NOTE: would be available for claims based on other breaches of the Trade-marks Act(e.g. depreciation of goodwill, passing off, false or misleading representations, etc. discussed earlier).)
Injunction?
N/A for trade mark infringement.
(NOTE: would be available for claims based on other breaches of the Trade-marks Act(e.g. depreciation of goodwill, passing off, false or misleading representations, etc. discussed earlier).)
Significant case law
Consumers Distributing Co v. Seiko Time Canada Ltd (1984) 1 CPR (3d) 1 (SCC)
HJ Heinz Co of Canada Ltd v. Edan Food Sales Inc. (1991), 35 CPR (3d) 213 (FCTD).
Smith & Nephew In v. Glen Oak Inc. (1996), 68 CPR (3d) 153.
Kraft Foods Inc. v. Euro Excellence Inc. 2007 SCC 37.
Chile
Region
MARQUES member
Francisco Carey
International
Yes
Regional
No
Trade mark infringement
No
Other claim
No
Defences
N/A
Criminal sanctions
N/A
Customs
No
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
China
Region
MARQUES member
Lei Zhao
International
controversial
Regional
Yes
Trade mark infringement
In China, parallel imports of patented goods have been legitimized by Chinese Patent Law. But it’s a controversial issue in China, whether parallel importing constitutes trademark infringement. If only the Claimant’s business or price structures are damaged, “parallel imports” might be acceptable to the courts and will not be deemed as trademark infringement in most case. Nevertheless, it may constitute trademark infringement, provided that parallel imports damages one of the trademark's functions.
Other claim
Anti-unfair competition
Defences
Criminal sanctions
No
Customs
No
Damages
Account of profits
Yes
Injunction?
No
Significant case law
Infringement:
“MICHELIN” tire case -- (2009) changzhong minchu No. 0073 --(2009)???????0073?
“Gucci” case--(2013) Yang minsan (zhi) No. 574--(2013)???(?)???574?
Non - infringement:
Fendi case -- (2016) Hu 0115 minchu No. 27968--(2016)?0115??27968?
J.P.CHENET case -- (2013) Jingao minsan zhongzi No. 0024 --(2013)???????0024?
Colombia
Region
LATAM
MARQUES member
Andrés Zapata
International
Decision 486 de 2000
Regional
Specifically included in decree 1313 de 2010 (Drugs) and Law 1762 of 2015
Trade mark infringement
Infraction does not exists, exclusive right is exhausted after the first sale takes place. Howeverdue to the low quality of the products it might apply.
Other claim
Unfair competition trials (articles 258 to 269 Decision 486)
Defences
Criminal proceedings (articles 306 and 309 Penal Code and
Criminal code of procedure)
Criminal sanctions
If an act of unfair competition is given, criminal sanctions are possible.
Customs
Custom authorities cannot avoid transit of products for parallel importations. However it can make it for threat of IP right infringement or counterfeiting.
Damages
Eventually, damages prooved within an injuction process.
Account of profits
Is an alternative to damages
Injunction?
Aplly if it is about a civil trial, looking for demages or in cases prooving one or more unfair competition conducts.
Significant case law
Costa Rica
Region
CA
MARQUES member
Melissa Mora
International
Yes. Expressly included in our Trademark Law
Regional
Trade mark infringement
No
Other claim
N/A
Defences
N/A
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Czech Republic
Region
EU
MARQUES member
International
NO
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
Right for information (about the origin and amount of the goods, distribution networks)
Defences
Criminal sanctions
No
Customs
No
Damages
Theoretically: Damages (actual amount has to be supported by evidence, very difficult in practice); and / or unjust enrichment and or reasonable satisfaction of the immaterial harm. However very difficult (if not impossible) to claim / obtain damages in P
Account of profits
NO
Injunction?
Permanent injunction to restrain dealing in products bearing the trade mark that have not been put on the market in the EEA by the Claimant or with its consent NOT POSSIBLE. Permanent injunction only available in relation to specifically determined produc
Significant case law
NA
Dominican Republic
Region
LA
MARQUES member
Jaime Angeles
International
Yes
Regional
Trade mark infringement
Parallel imports are not infringing goods unless it can be shown that the condition of the goods have changed or been impaired after they had been put on the market and where the use is detrimental to the distinctive character or reputation of the TM
Other claim
Defences
Criminal sanctions
Customs
Customs cannot seize parallel imports as they are neither infringing or counterfeit goods
Damages
Account of profits
Injunction?
Significant case law
Ecuador
Region
LATAM
MARQUES member
Maria Cecilia Romoleroux
International
Expressly authorized by the Ecuadorian IP law
Regional
N/A
Trade mark infringement
N/A
Other claim
N/A
Defences
N/A
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
El Salvador
Region
Central america
MARQUES member
Helena Menjivar
International
Included in the Salvadorean Law of Intellectual Property and International treaties as (ADPIC), CAFTA
Regional
No
Trade mark infringement
No
Other claim
N/A
Defences
Goods are genuine
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A However there is controversy on propane gas and medicines
Germany
Region
EU
MARQUES member
Till Lampel
International
No
Regional
Yes, if the product has been put on the market in the EEA by the intellectual property rights owner or with its consent. However, exhaustion is not applicable, if the product is altered, deteriorated, de-packed, repackaged or if the trademark is altered.
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Basically possible, but rather unlikely in cases of parallel imports.
Customs
Possibility to apply for a border seizure.
Damages
As part of the so-called "threefold calculation of damages", the injured party can either demand a ficticious license fee, the infringing parties's profit or the compensation for damage actually suffered. The actually suffered damage is however the most
Account of profits
Yes, as mentioned before, the injured party is free to demand the infringing partie's profit.
Injunction?
Yes, the injured party has the right to demand for injunction, disclosure and damages and when appropriate for removal and destruction of the products.
Significant case law
ECJ Judgement dated 17 May 2018, C-642/16 - Junek Europ-Vertrieb/Lohmann & Rauscher International – Debrisoft
Greece
Region
EU
MARQUES member
Stefanos Tsimikalis
TSIMIKALIS KALONAROU LAW FIRM
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Very unlikely in practice
Customs
No
Damages
Right holder may seek actual damages suffered, although in most cases these are not easily quantifiable.
Alternatively, damages may be calcualted on the basis of the amount that the infringer would have paid if had sought a license agreement.
If the infri
Account of profits
Yes - as an elective alternative to damages. Entitled to payment of the net profits made by the infringer in dealings with infringing goods.
Injunction?
Yes - interim injunction to restrain dealing in products bearing the trade mark that have not been put on the market in the EEA by the Claimant or with its consent.
Significant case law
Thessaloniki Court of Appeals
855/2012
Athens Court of Appeals
4723/2010
Athens Court of First Instance 3756/2009
Athens Court of Appeals 6414/1996
Honduras
Region
MARQUES member
Félix Suazo
International
NO
Regional
YES
Trade mark infringement
YES
Other claim
Defences
Goods are genuine.
Criminal sanctions
unfair competition actions are possible.
Customs
no
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Hong Kong
Region
MARQUES member
International
yes
Regional
Trade mark infringement
only if the condition of the goods have been changed or impaired
Other claim
An action for passing off may be available if there had been misrepresentation as to source, nature or quality.
Defences
Goods are genuine
Criminal sanctions
unlikely
Customs
possible if parallel imports do not comply with labelling or pakaging regulations or if false trade descriptions are used
Damages
Account of profits
Injunction?
Significant case law
Hungary
Region
EU
MARQUES member
Dr. Gabriella Sasvári
International
No
Regional
Yes- EEA
Trade mark infringement
Yes
Other claim
Defences
"Euro defences", exhaustion of rights
Criminal sanctions
No statutory criminal provision applicable for parallel import.
Customs
no
Damages
Taking into consideration that it is difficult to prove the amount of damage occured by the claimant, damage claim is rare; claimants show a tendency of proposing other claims (disclosure of data, publication of the judgement, destruction of products).
Account of profits
Yes - claimants may demand restitution of the economic gains achieved through infringement.
Injunction?
Yes - permanent injunction to restrain dealing in products bearing the trade mark that have not been put on the market in the EEA by the Claimant or with its consent.
Significant case law
Metropolitan Court of Appeal Case No. 8.Pf.21.341/2007 (JIM BEAM)
India
Region
MARQUES member
International
Pursuant to the judgment of Delhi High Court in Kapil Wadhwa's case, India adheres to international exhaustion of goods.
Regional
No
Trade mark infringement
No
Other claim
Claim lies under other laws for the time being in force, including the Contract Act
Defences
Goods are genuine.
Criminal sanctions
Not Applicable
Customs
Customs cannot seize parallel goods on account of IPR violation, but it can impose penalties for being undervalued, misdeclared, etc.
Damages
No damages can be claimed against the importer of parallel goods, provided the importer adhers to the following guidelines prescribed by the Court, vis-à-vis; prominently displaying in their showroom that the goods are imported; and that the importer/sell
Account of profits
Since the goods are treated as genuine, the dealer of parallel goods cannot be held liable for account of profits.
Injunction?
No ad-interim or ex-parte or permanent injunction can be obtained, as the parallel goods are not treated as infringing the intellectual property rights of the right-holder.
Significant case law
Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd. & Anr. 2013 (53) PTC 112 (Del)
Ireland
Region
EU
MARQUES member
Patricia McGovern
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Yes but not likely in practice
Customs
No
Damages
Yes a rightsholder may be entitled to damages.
Account of profits
Yes a rightsholder can elect for the remedy of an account of profits instead of damages however, as it is an equitable remedy, it is at the discretion of the court as to whether it is granted.
Injunction?
Yes one can seek an injunction to restrain dealings in products bearing a trade mark which have not been put on the market in the EEA by or with the consent of the rights holder.
Significant case law
Kazakhstan
Region
The Eurasian Economic Union (EEU)
MARQUES member
International
No.
Regional
Yes.
The members of the Eurasian Economic Union discuss an implementation of exclusions from the regional exhaustion principle for several kinds of goods like medical devices, vehicle spar parts, cosmetics.
Trade mark infringement
Yes.
Other claim
No.
Defences
Civil proceedings.
Criminal sanctions
Yes, but the case may face difficulties since the local court practice involving criminal cases focuses on counterfeit (fake) trademark infringement only.
Customs
Yes, if the trademark has been included in the Customs Register of Intellectual Property of Kazakhstan upon application of the trademark owner. When a customs office detects the import of products bearing registered trademarks by unauthorized importers, i
Damages
The rightholder may choose to claim compensation of damages caused by the infringement or to seek compensation in the amount to be determined by the civil court. There may be difficulties with regard to determining the amount of damages (particularly whe
Account of profits
No.
Injunction?
Yes, the rightholder may apply for a permanent injunction to prohibit sales of products bearing the trade mark that have not been put in the market of the EEU by the rightholder or upon its consent. There may be difficulties with actual implementation as
Significant case law
Chivas Holding IP Limited vs. Brig LLC 2015 (Case N 3gp-625-15).
Kyrgyz Republic
Region
The Eurasian Economic Union (EEU)
MARQUES member
International
No
Regional
Yes.
The members of the Eurasian Economic Union discuss an implementation of exclusions from the regional exhaustion principle for several kinds of goods like medical devices, vehicle spar parts, cosmetics.
Trade mark infringement
Yes
Other claim
Defences
Civil proceedings.
Criminal sanctions
Yes, trademark infringement may lead to criminal liability as fine or public works.
Customs
Yes, if the trademark has been included in the Customs Register of Intellectual Property of the Kyrgyz Republic upon application of the trademark owner. When a customs office detects the import of products bearing registered trademarks by unauthorized imp
Damages
Yes, the infringer may be held liable upon civil claim of the rightholder. The infringer might be ordered to compensate actual damages of the rightholder. In accordance with the current Kyrgyz civil legislation the owner of a trademark has a right to requ
Account of profits
No.
Injunction?
Yes. The rightholder may apply for a preliminary injunction such as arrest of the allegedly counterfeit goods subject to the pending litigation. The rightholder may also apply for a permanent injunction to prohibit sale of the goods and other ways of thei
Significant case law
Bacardi & Company Limited and Legion Asia Distribution LLC vs. Duty Free International LLC of 21 November 2014 Case No. ED-399/14.
Malaysia
Region
MARQUES member
International
yes
Regional
Trade mark infringement
No. Unless the TM is owned by a different owner in Malaysia, then it can amount to TM infringement even if the goods are manufactured by the TM owner in the country of making
Other claim
Defences
Criminal sanctions
unlikely if they are parallel imports
Customs
unlikely in the case of parallel imports
Damages
yes
Account of profits
as an alternative to damages
Injunction?
yes
Significant case law
Mexico
Region
MARQUES member
International
Expressly included in the Mexican Law of Industrial Property (trademark law)
Regional
Trade mark infringement
No
Other claim
N/A
Defences
Goods are genuine
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Netherlands
Region
EU
MARQUES member
Menno Heerma van Voss
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
No
Defences
In principal, - as a rule of evidence consistent with EU-law - the party that wishes to rely on exhaustion of the trade mark right has the burden of proof that the rights have been exhausted with respect of each and every product (Sebago ECJ C-173/98, p 22 and Van Doren v Lifestyle sports, ECJ C-244/00, p 26). However, if the alleged party succeeds in establishing that there is a real risk of partitioning of national markets if he himself bears that burden of proof, particularly where the trade mark proprietor markets his products in the EEA using an exclusive distribution system, it is for the trade mark proprietor to establish that the products were initially placed on the market outside the EEA by him or with his consent. If such evidence is adduced, the alleged party has to proof proprietor’s consent to the marketing in the EEA. (Van Doren v Lifestyle sports, ECJ C-244/00, p. 37-42). However, in case the right holder has a selective distribution system in place in the EU, the right holder may not have such burden of proof (Dutch Surpreme Court, 22-09-2006, Lancôme v Kruidvat, p 3.3.1, ECLI:NL:HR:2006:AX3069).
Criminal sanctions
Very unlikely in practice
Customs
No
Damages
Claimant put to election as to claiming damages for the losses suffered by the claimant or seeking an account of the profits made by the defendant.
Account of profits
Yes - as an elective alternative to damages. Entitled to payment of the net profits made by the infringer in dealings with infringing goods.
Injunction?
Yes - permanent injunction to restrain dealing in products bearing the trade mark that have not been put on the market in the EEA by the Claimant or with its consent.
Significant case law
Makro v Diesel: ECJ C-324/08 and Dutch Supreme Court ECLI:NL:HR:2008:BC9766 and ECLI:NL:HR:2013:1613. Lancôme v Kruidvat: Dutch Surpreme Court, ECLI:NL:HR:2006:AX3069
New Zealand
Region
MARQUES member
International
yes
Regional
Trade mark infringement
no
Other claim
if there is a change in quality or character, an action under the Fair Trading Act may be available
Defences
Criminal sanctions
not likely
Customs
not likely
Damages
Account of profits
Injunction?
Significant case law
Nicaragua
Region
LATAM
MARQUES member
Mayra Navarrete
International
Yes
Regional
Trade mark infringement
no prohibition and therefore is not actionable
Other claim
Possible civil action for not on the grounds of IP infringement
Defences
Criminal sanctions
NO
Customs
NO, from an IP perspective
Damages
Not applicable. Parallel Importations do no represent a trademark infringement
Account of profits
Not applicable. Parallel Importations do no represent a trademark infringement
Injunction?
NO
Significant case law
none
Norway
Region
EEA
MARQUES member
Kristina Edén Johnsen
International
Regional
Yes- EEA
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Yes, but very unlikely in practice
Customs
Yes
Damages
The right holder is entitled to a compensation, based on the same principle as for other IP infringements. In cases of ifringements by intention or gross negligence the compensation is doubled.
Account of profits
Payment of the net profit may be claimed alone or in combination with damages and compensation.
Injunction?
Yes - injunction to secure cease and desist claims and payment of compensation / damages. Permanent injuction possible for customs' surveillance.
Significant case law
Panama
Region
LatAm
MARQUES member
Hugo Morán
International
Regional
Trade mark infringement
N/A
Other claim
N/A
Defences
N/A
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Paraguay
Region
LA
MARQUES member
International
Yes. Expressly contemplated in our Trademark Law.
Regional
No. In the MERCOSUR region, there is no rule regarding the topic.
Trade mark infringement
No
Other claim
N/A
Defences
N/A
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Paraguay
Region
LA
MARQUES member
International
Yes. Expressly contemplated in our Trademark Law.
Regional
No. In the MERCOSUR region, there is no rule regarding the topic.
Trade mark infringement
No
Other claim
N/A
Defences
N/A
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Peru
Region
LATAM
MARQUES member
Adriana Barrera
International
Yes (through article 158 of Andean Community Decision 486)
Regional
No
Trade mark infringement
No (however a trademark infringement can be filed as long as the rightholder can prove that the goods are not authorized)
Other claim
N/A
Defences
Infringer needs to prove that the goods were acquired from the rightholder or any authorized source.
Criminal sanctions
Parallel importations are not criminalized by law.
Customs
If the importer proves that the imported goods are authorized Customs cannot immobilized.
Damages
Parallel importation is allowed and therefore, unless it is proved that the imported goods are in fact unauthorized, no damages can be requested from it.
Account of profits
N/A
Injunction?
N/A
Significant case law
N/A
Puerto Rico
Region
US
MARQUES member
Samuel F. Pamias Portalatin
International
Yes, however imported goods may only be allowed if they were authorized by the brand owner for sale in the United States and do not differ materially from the Authorized version.
Regional
No
Trade mark infringement
Yes, US Courts have interpreted that parallel imports can constitue a violation to the Lanham Act, under sections 32 (1)(a), 42 and 43 (a)(1). 15 U.S.C. §§ 1114(1)(a), 1124, 1125(a)(1) (1988). Section 32 (1)(a): "[T]he unauthorized importation and may well turn an otherwise genuine product into a "counterfeit"one." Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633 (1st Cir. 1992) Section 42: Bars the importation of goods if they copy or simulate a trademark. The question of infringement hinges on whether material differences exist between the goods. Section 43 (a)(1): Prohibits false designations of origin, which extends to origin of source, sponsorship or affiliation. Id. Sections 32 and 43(a) cover unauthorized importation of goods materially different from branded goods authorized for sale in the United States. Importation of identical goods is not actionable under the Lanham Act.
Other claim
Action under the Copyright Act, which prohibits the importation, without the copyright owner's permission, of copies acquired outside the United States. 17 U.S.C. § 602(a). Also, a claim through the ITC pursuant to Section 337 of the Tariff Act could result in an order barring all imports of an infringing item. However the ITC has no authority to award monetary relief or damages.
Defences
Under the Copyright Act: Three exceptions to 17 U.S.C. § 602(a), (1) importations or exportations under the authority or for the use of the Government of the United States, except copies for use in schools; (2) importations or exportations for private use of the importer or exporter or any person arriving from outside the United States when it forms part of that person's personal baggage; (3) importations by an organization of scholar, religious or educational purposes and not for private gain. (1 copy for archival purposes and no more than 5 copies for library lending purposes.) Defense against the Lever Rule: Importer may comply with the Lever Rule by affixing a Disclaimer to the goods to allow their importation. (Disclaimer may read: This product is not a product authorized by the United States trademark owner for importation and is physically and materially different from the authorized product.)
Criminal sanctions
No
Customs
Under Section 526 of the Tariff Act of 1930: "A United States trademark holder covered by § 526 can prohibit or condition all importation of merchandise bearing its trademark" K Mart Corp. v. Cartier, 486 U.S. 281, 295, 108 S. Ct. 1811, 1819 (1988) Justice Scalia dissenting. Under this section if genuine goods are imported without permission of domestic trademark owner, goods are subject to forfeiture. Lever Rule: States that if there are material and physical differences between the imported goods (unauthorized) and the goods sold under the same trademark in the U.S., the trademark owner can prevent the unathorized importation. (Lever Rule must be applied for by the U.S. registrant, U.S. Customs will not enforce it on their own.)
Damages
Available under sections 32 (1)(a), 42 and 43 (a)(1) of the Lanham act. 15 U.S.C. §§ 1114(1)(a), 1124, 1125(a)(1) (1988) and under Section 526 of the Tariff Act of 1930
Account of profits
Yes, available under Section 43 (c) of the Lanham Act. "[S]hall be liable for the same damages and profits provided for wrongful use of a trademark[.]" 15 U.S.C. § 1125 (c)
Injunction?
Available under section 32 (1)(a), 42 and 43 (a)(1) of the Lanham Act. 15 U.S.C. §§ 1114(1)(a), 1124, 1125(a)(1) (1988). 42 of the Lanham act. 15 U.S.C. § 1124 (1988). Preliminary injunctive relief is also available under Section 526 of the Tariff Act of 1930 upon showing irreparable injury.
Significant case law
Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633 (1st Cir. 1992)
Romania
Region
EU
MARQUES member
Andrew Ratza
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Althogh theoretically possible, the prosecutors have consistently decided that parallel imports do not present the necessary level of social danger in order to constitute a crime
Customs
No
Damages
Claimant can elect between claiming damages for the losses suffered or seeking an account of the profits made by the defendant. Alternatively the claimant can request the court to set the damages as a lump sum on the basis of elements such as at least th
Account of profits
Yes. The claimant can request the payment of the net profits made by the infringer in dealings with infringing goods over the period of three years prior to submission of the claim. Defendant entitled to net off direct costs associated with sale of infri
Injunction?
Yes - A preliminary injunction to cease the infringing activities pending a final decision in the infringement action is possible. The Infringement action must be filed within a maximum of 30 days from the date the preliminary injuction is issued, otherwi
Significant case law
Supreme court decision no. 2097/2014 in FORD MOTOR COMPANY v.
SC AUGSBURG INTERNATIONAL IMPEX SRL (File no. 65704/3/2011)
Russia
Region
RU
MARQUES member
ES
International
Regional
Yes, Regional
Trade mark infringement
Yes
Other claim
Claims under administrative violation, civl code
Defences
Goods are genuin
Criminal sanctions
N/A
Customs
Customs can seize the parallel goods basing on ifnromation that that importer is not authorized by the TM owner
Damages
Damages can be requested if the Plaintiff suceed in proving that the parallel goods were enterted into commercial circulation on the RU territory without TM owner authorization
Account of profits
In lieu of damages, the trademark owner may also demand statutory compensation
Injunction?
Theoretically the injunctions are available however practically it does not work. The Customs authoritoes can seize the goods under administrative procedure if they reveal the parallel goods before informing the Tm owner and initiaitng the administrative
Significant case law
"Wella Aktiengesselshaf" v. phisical entity ; "OOO Porsche Russland" and Customs v. Genesis
Russia
Region
The Eurasian Economic Union (EEU)
MARQUES member
International
No.
Regional
Yes.
The members of the Eurasian Economic Union discuss an implementation of exclusions from the regional exhaustion principle for several kinds of goods like medical devices, vehicle spar parts, cosmetics.
Trade mark infringement
Yes.
Other claim
Defences
Civil proceedings.
Criminal sanctions
No.
Customs
Yes, if the trademark has been included in the Customs Register of Intellectual Property of Russia upon application of the trademark owner. The customs authority may detain goods for 10-day period. The goods will be released upon the expiry of the 10-day
Damages
Yes, but this claim is difficult to prove in practice. As an alternative, instead of payment of damages the trademark owner may request a statutory trademark infringement compensation.
Account of profits
No.
Injunction?
Yes, based on a court order an injunction may be granted, e.g. in the form of arrest of the goods or prohibition of their transfer to other persons or entities.
Significant case law
Ruling of the Constitutional Court of Russia of 13 February 2018 N 8-P, Ruling of the Presidium of the High Arbitrazh Court of Russia of 3 February 2009 N 10458/08
Singapore
Region
-
MARQUES member
Elaine Tan
International
yes
Regional
Trade mark infringement
Parallel imports are not infringing goods unless it can be shown that the condition of the goods have changed or been impaired after they had been put on the market and where the use is detrimental to the distinctive character or reputation of the TM
Other claim
Claim under contract law may be made out against licensees/manufacturers. But a seller of parallel imports may not be liable for breach of contract if there is no privity of contract between the rights holder and the seller
Defences
n/a
Criminal sanctions
none available
Customs
Customs cannot seize parallel imports as they are neither infringing or counterfeit goods
Damages
not available if no liability for tm infringement is found
Account of profits
n/a
Injunction?
n/a
Significant case law
n/a
South Korea
Region
MARQUES member
International
yes
Regional
Trade mark infringement
no prohibition and therefore is not actionable
Other claim
Defences
Criminal sanctions
n/a
Customs
n/a
Damages
Account of profits
Injunction?
Significant case law
Spain
Region
EU
MARQUES member
Carles Prat/Sonia Santos
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
No
Defences
Reversal of the burden of proof i.e. right holder to prove that products were first placed by it or with its consent outside of the EEA, where a third party succeeds in establishing that there is a
real risk of partitioning of national markets if he himself bears that burden of
proof
(Van Doren v Lifestyle sports, ECJ Case C-244/00)
Criminal sanctions
No
Customs
No. Query: use of enhanced information rights under art.17 (4) EC Reg.168/2013 possible in injunctive civil proceedings or contrary to spirit of Recital (6)?
Damages
Claimant put to election as to claiming damages for the losses suffered by the claimant, or seeking an account of the profits made by the defendant or claiming the aumount of royalties that would have been due if the infringer had sought a licence from the
rightholder. Damages to reputation of the trade mark additionally possibile.
Account of profits
Yes - in any case right holder entitled to one per cent of the turnover in infringing goods during the entire duration of the infringement.
Injunction?
Yes - permanent injunction to restrain dealing in products bearing the trade mark that have not been put on the market in the EEA by the Claimant or with its consent.
Significant case law
Jack Daniel's Properties, Inc y Bacardí España v. Licores Navarrés SL, STS 965/2008, 20 October 2008.
Sweden
Region
EU
MARQUES member
Anette Henrysson
International
No
Regional
Yes - EEA
Trade mark infringement
If an exhaustion of the rights to the trademark exists, it is only possible to target the alleged infringer with a claim if the condition of the goods have been changed, if the quality of the goods has deteriorated or if there are any other reasonable grounds to oppose the use of the trademark.
If there has been no exhaustion of the rights to the trademark, it is possible to claim trademark infringement in regards to the alleged infringer.
Other claim
In cases where it is likely that a third party infringes the rights to a trademark, the rights holder may apply for (i)Right to information (e.g. information pertaining to the origin of the goods, distributor networks, price of the goods etc.) and/or (ii) infringement investigation (investigation in an infringer's premise in the search for documents or objects that may be significant in regards to the infringement).
Defences
As a general rule, it is the party claiming exhaustion of the IP rights that has to show that such exhaustion exists.
However, if the third party can show that there is a real risk for partioning of national markets, the third party may have a right to protect its source. In these situations it is therefore the right holder that needs to show that the goods only have been sold outside EEA.
If the right holder is able to show that is the case, the alleged infringer must show that the proprietor has consented with the marketing and selling of the current goods within EEA.
Criminal sanctions
Yes - but not very likely in practice
Customs
Customs are not able to seize goods that has been parallel imported to Sweden (e.g. if the goods have been manufactured or released in another market within the EEA with the right holder's consent).
Customs may however seize a product, that may be deemed infringing. The rights holder thereafter has a limited amount of time to, in writing, comment on why the seized goods are infringing the right holder's IPR. After such written explanation, the Customs Office will make a decision to intervene or not.
Damages
If the use of a trademark is deemed as infringing, and therefore not subject to parallel import, with the exception of parallel import in cases mentioned under column F, the right holder has a right to claim damages due to the infringement. The same applies for the exemptions to parallel import as mentioned in column F. For those cases, it is likely that the damages will mostly consist of damage to the reputation of the mark, but other factors, as stated below, may also be included in the determination of the damages amount.
If the infringing party has acted without intent and/or through negligence, the right holder has a right to reasonable compensation due to the infringer's use of the trademark.
In cases where the infringing party has acted with intent or through negligence, the right holder also has a right to additional compensation due to the infringement. When determining the amount of the additional compensation, the following shall be taken into account:
- lost profits;
- profits realized by the party committing the infringement;
- damage to the reputation of the mark;
- non-pecuniary loss; and
- the interest of the holder of the right in preventing infringement from taking place.
Account of profits
See column K.
Injunction?
If the use of a trademark is likely to be deemed infringing of a right holder's trademark rights, it is possible to apply for an injunction. An injunction may also be applied for and issued until the case has been conclusively adjudicated or another decision has been taken, i.e. an interim injunction.
Significant case law
Switzerland
Region
ECTA
MARQUES member
International
Yes
Regional
No
Trade mark infringement
No
Other claim
To take advantage of the breach of contract form a third person, can represent an act of unfair competition (general clause, Art. 2 UWG) if specific and aggravating facts are given which fulfil the terms of unfair competition. Such instances can be the negative influence on the competition, which the behaviour of the third brings with it.
Defences
No. Influence of the market competition.
Criminal sanctions
If an act of unfair competition is given, criminal sanctions are possible.
Customs
No
Damages
If an act of unfair competition is given damages can be required.
Account of profits
If an act of unfair competition is given profits can be required.
Injunction?
Possible based on unfair competition, however with rather moderate chances of success.
Significant case law
BGE 122 III 469 Chanel I
Taiwan
Region
MARQUES member
International
yes
Regional
Trade mark infringement
no
Other claim
action under unfair competiton may be available if it can be shown that the parallel import is "free riding" on the reputation of the genuine goods
Defences
Criminal sanctions
not likely
Customs
not likely
Damages
Account of profits
Injunction?
Significant case law
Thailand
Region
MARQUES member
International
yes
Regional
Trade mark infringement
no
Other claim
Defences
Criminal sanctions
n/a
Customs
n/a
Damages
Account of profits
Injunction?
Significant case law
Turkey
Region
EU/Middle East
MARQUES member
International
Parallel importation is completely legal and allowed and the international exhaustion principle is valid in Turkish practice.
Regional
Trade mark infringement
Other claim
Defences
Criminal sanctions
Customs
Damages
Account of profits
Injunction?
Significant case law
UK
Region
EU
MARQUES member
Ian Lowe
International
No
Regional
Yes - EEA
Trade mark infringement
Yes
Other claim
Defences
Criminal sanctions
Very unlikely in practice
Customs
No
Damages
Claimant put to election as to claiming damages for the losses suffered by the claimant or seeking an account of the profits made by the defendant. May raise difficult issues as to the appropriate losses particularly where the trade mark proprietor is no
Account of profits
Yes - as an elective alternative to damages. Entitled to payment of the net profits made by the infringer in dealings with infringing goods over the period of six years prior to the issue of the Claim Form. Defendant entitled to net off direct costs ass
Injunction?
Yes - permanent injunction to restrain dealing in products bearing the trade mark that have not been put on the market in the EEA by the Claimant or with its consent. Possible proviso to enable defendant to notify serial numbers of goods proposed to be de
Significant case law
Oracle America v M-Tech Data [2012] ETMR 43
Ukraine
Region
MARQUES member
International
Yes
Regional
Trade mark infringement
No
Other claim
Claims under other laws, particularly contract law, consumer protection law
Defences
Goods are genuine
Criminal sanctions
Not applicable
Customs
Customs cannot seize parallel goods on the grounds of IPR infringement
Damages
No
Account of profits
No. since the goods are treated as genuine
Injunction?
Since the goods are genuine, no provisional or permanent injunctions are available
Significant case law
N/A
Uruguay
Region
LA
MARQUES member
Virginia Cervieri
International
Yes. Expressly contemplated in our Trademark Law.
Regional
No. In the MERCOSUR region, there is no rule regarding the topic.
Trade mark infringement
No
Other claim
Consumer rights, ip rights
Defences
N/A
Criminal sanctions
N/A
Customs
N/A
Damages
N/A
Account of profits
N/A
Injunction?
N/A
Significant case law
SONY CONSOLES, THAT WERE SEIZED BASED ON COPYRIGHT ALTOUGH THERE WERE GENIUINE.
Venezuela
Region
LATAM
MARQUES member
Ricardo Antequera
International
yes
Regional
Trade mark infringement
NO
Other claim
possible civil action for not on the grounds of IP infringement
Defences
Criminal sanctions
NO
Customs
NO, from an IP perspective
Damages
not applicable. Parallel Importations do no represent a trademark infringement
Account of profits
not applicable. Parallel Importations do no represent a trademark infringement
Injunction?
NO
Significant case law
none
Venezuela
Region
LATAM
MARQUES member
Ricardo Antequera
International
yes
Regional
Trade mark infringement
NO
Other claim
possible civil action for not on the grounds of IP infringement
Defences
Criminal sanctions
NO
Customs
NO, from an IP perspective
Damages
not applicable. Parallel Importations do no represent a trademark infringement
Account of profits
Injunction?
Significant case law
