DLN Project

[IT/DE] Trademark exhaustion and cross-border litigation: coordinated defense between Italy and Germany

Trademark exhaustion and coordinated defence in cross-border litigation.

Distribution within the European Union can raise complex questions at the intersection of intellectual property rights and the free circulation of goods, particularly when products are resold across national borders.

In this matter, a German manufacturer sent a cease-and-desist letter to an Italian company distributing original spare parts within the EU and subsequently initiated proceedings before the German courts.

DLN members Thomas Nägele (Germany) and Marco Venturello (Italy) worked together to develop a coordinated defence strategy, assessing the case from both the German and Italian perspectives.

A central issue was the principle of trademark exhaustion. The defence established that the original spare parts had already been lawfully placed on the EU market and that the manufacturer’s trademark rights in relation to those goods were therefore exhausted.

Following the defence presented on behalf of the Italian company, the German manufacturer acknowledged the exhaustion of its trademark rights and withdrew its claim.

This project illustrates how coordinated cross-border expertise can provide an effective response when distribution, intellectual property and litigation issues converge across European jurisdictions.

If you want to benefit from coordinated European expertise in distribution law, get in touch with the DLN.

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DLN Members involved

SZA Schilling, Zutt & Anschütz (Germany)

SZA Schilling, Zutt & Anschütz is one of the most renowned German full service law firms. Numerous leading companies and entrepreneurs from Germany and abroad rely on our expertise for more than 100 years. More than 120 lawyers provide customized, efficient and solution-oriented advice to each client in all areas of business law.

Venturello e Bottarini, Avvocati (Italy)

The law firm VENTURELLO E BOTTARINI, AVVOCATI, founded by Mr. Marco Venturello at the beginning of 2005, wishes to provide individuals and enterprises with legal assistance in the field of inventive and creative activities (patents, trademarks, copyright, design, know-how, etc.) and commercial contracts. These last are the vehicles through which the enterprises make their products circulate at national, European Union and international level, each vehicle (agency, distribution, franchising, joint venture, etc.) having its own characteristics.
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