A change in the case law of the Austrian Supreme Court (OGH) on the allocation of the burden of proof regarding the principle of exhaustion was to be expected due to the ECJ decision in the Hewlett Packard case (C-367/21) and has now been followed by the OGH in a recent decision (4 Ob 56/24z); the new legal situation is not very pleasing for trademark owners.
The case concerned perfumes and the question of whether retailers must prove that products were lawfully marketed in the EEA – or rather whether the trademark owner must prove that the products in question were marketed outside the EEA.
According to previous case law, the burden of proof was generally on the retailer. In the wake of Hewlett Packard, the Supreme Court has now ruled that a retailer who relies on credible EU suppliers can demand that the trademark owner proves the initial distribution outside the EEA. This means that in future it will be up to brand owners to install a system that allows them to trace where the respective products were first marketed. The extent to which such systems will have to be disclosed in court proceedings remains to be clarified. In any case, such systems can claim protection as trade secrets if the requirements are met.
Read the article by Claudia Csáky here or on the Lexology website.
