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After eight years in court, TTP was finally successful in a major trademark infringement litigation.

This is probably the first decision of the SCC on parallel import after its 2009 and 2012 Interpretative Decisions on the same matter – Interpretative Decision No. 1 of June 15, 2009, and Interpretative Decision No. 1 of May 11, 2012.

The single most important positive effect of the 2016 decision is that the SCC finally characterized parallel import as a trademark infringement. This conclusion of the court is in line with settled case law in all EU Member States and corresponds to the interpretation given by the CJEU.

Unfortunately, the 2016 decision has a negative effect as well. In terms of the reasoning in its 2009 and 2012 Interpretative Decisions, the SCC held that although a trademark infringement parallel import cannot be remedied by the special claims provided for in the Marks and Geographical Indications Act. The SCC ruled that any trademark proprietor seeking protection for an infringement of the kind should have recourse to the courts in accordance with the general procedure laid down in the Civil Procedural Code.

Importantly, a lawsuit based on the special claims for establishment and cessation of a trademark infringement is processed in accordance with the rules applicable to fast proceedings. The rationale is to provide swift protection of the proprietor’s rights and accordingly cessation of the infringement. Evidently, this is not the case with claims processed pursuant to the general procedure. Thus, the SCC eliminated the possibility for trademark proprietors to seek protection against parallel import through the special claims provided for in the Marks and Geographical Indications Act. In our opinion, this will result in inefficient and delayed litigations, which is likely to disincentives trademark proprietors to even seek protection in cases of parallel import. Ultimately, it could devalue exclusive trademarks rights.

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