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Thursday, 7 December 2017

Commissioned research opportunity - exhaustion of rights

End-of-term exhaustion of academic Kats
The UK Intellectual Property Office (IPO) has kindly informed us that they are looking to commission research around exhaustion of rights.

As readers are no doubt aware, exhaustion of rights in IP refers to the limits on the rights to control distribution and resale of a good after it has been legitimately put on the market in a specific territory. Once a good has been marketed, depending on the territory, the IPRs (or certain aspects of it) are said to be exhausted. The UK is currently part of a regional exhaustion system, with the region being the European Economic Area (EEA). This means that goods marketed in the EEA cannot be barred from being resold/distributed across member states on the basis of IPRs, but rights holders have the ability to control imports from outside the bloc. (Some recent Kat posts on the topical issue here, here and here.)

As such, the UK IPO, is looking to determine the overall economic and social value of parallel trade arising from the current IP exhaustion regime and how this would vary across the different possible regimes.

This work will encompass multiple research projects with the current proposals looking at: the role of price differentials, sector specific impacts and enforcement impacts.

The IPO would welcome any interest in bidding for this research. Please contact Nirojan Pathmanathan ( for further details.

Sleepy cat image: Jon Brinn


THE US anon said...

I find the purposeful inclusion of "within specific territory" to be both interesting AND to assume conclusions not necessarily present.

For example, this topic has recently been illuminated from a US perspective in that the choice by a rights holder to obtain the benefit of the bargain and place their goods into the stream of commerce ANYWHERE serves to exhaust the IP rights on the item so placed into the steam of commerce.

As far as the US sovereign goes - there is NO "douple dip" provided with the IP laws that allows one to obtain the benefit of a first dip (placing the goods into the stream of commerce) and then - and totally outside the purview of IP - control the SECONDARY market of those goods to which the benefit of the bargain has been achieved.

I certainly hope that the naked assumption that control of secondary markets somehow evades exhaustion doctrine will be at least challenged if not outright denounced with this upcoming work.

Pseudonymous said...

Yup -here comes international exhaustion

Anonymous said...

Currently, rights are exhausted within the EU by virtue of the principal of the free movement of goods and EU CTM law.

What was the position in the UK in respect of exhaustion of patent rights prior to EU membership? Or rather, Common Market membership!

THE US anon said...


I am not certain the intent of your comment, but I would provide a slight "correction:"

Here comes the recognition - and rightfully so - of international exhaustion.

IP does NOT confer powers over secondary markets, nor should it. Remember, ALL of the items here, being placed in the stream of commerce by the rights holder, have been so placed at the discretion (and asking price) OF the rights holder.

Why in the world should anyone think that providing control over secondary markets and allowing Double Dipping has anything to do with patent rights or a strong patent system?

Anonymous said...

If the UK would decide to adopt the International Exhaustion on IP rights after Brexit comes effective, that could have severe impacts on the Brexit negotations as a whole as well. The UK government and the Eu commission have recently agreed to make efforts to keep an open border between the Republic of Ireland and Northern Ireland (the latter belongs to the UK). If that is the goal, how could then an EU- / EEA wide exhaustion (would apply to the Republic of Ireland) coexist with an International exhaustion (would apply to Northern Ireland) ?
From my point of view there are three alternatives:
(a) The regime of EU- / EEA wide exhaustion applies also to a Post-Brexit UK. Then there would be no issue for both Irelands but the CJEU jurisprudence then continues to apply to the UK at least on trademark matters.
(b) A post Brexit UK adopts the International exhaustion for the entire UK-territory. A real border would then have to be introduced between the two Irelands. That would have severe impacts on the economic- and social situation in this region. Some people fear that grey days of civil war would then come back. But even if not (hopefully not!), the economic consequences would be already very difficult.
(c) A post Brexit UK adopts the International exhaustion for the entire UK territory except Northern Ireland. One of the main political parties of Northern Ireland strongly opposes this concept. It is the same party on which PM Theresa May's majority in the UK Parliament depends. If the UK government would decide in favor of this third alternative, they need other parties in order to have a majority in the parliament.

It seems that trademark law or IP law in general will have a strong impact on whether there will be a Brexit with rules and agreements between the EU and the UK or not....

Christian Schalk, Attorney at Law (Rechtsanwalt) Leverkusen, Germany

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