Kind

Patent

When?
When one
has an
invention,
invention
means a
solution to
a
technologi
cal
product or
process1

Rights
Right to
solely exploit
(use,make,se
ll
,
import/expor
t)
A product or
process, to
appoint a
patent
successor
and design
licensing
contracts2

Trade
mark

When one
has a
design,
symbol or
expression
that
distinguis
hes
his/her
products
or
services. 5

Right to
solely exploit
exclusive
properties of
design,
symbol or
expression.
Products
with many
similarities
are also
protected by
a
trademark.6

How?
National applications are
done in the patent office of
the country in which you
want to patent.
Regional applications for
the EU are done in the
European patent office.
International applications
can be done in the World
Intellectual property
Organization, this
organization does not
grant patents, but
centralizes a patent, so
you do not have to apply
for a patent in every single
country.1

Time Span
A patent has
a time span
of 20 years.
Maintenance
fees must be
paid to keep
patent in
effect. In the
Netherlands
this is 40
but can
increase to
1400
annually.
1,3,4

Cost
In the Netherlands
patent application
costs 120, but a
compulsory novelty
search costs
100(national) or
794(international)
A patent attorney
costs between
2000 and 10000,
depending on
complexity of
invention and rates
of attorney. 4

1http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch2.pdf 2.1, 2.82

2https://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm
3http://www.epo.org/law-practice/legal-texts/html/epc/2013/e/ar63.html
4http://english.rvo.nl/topics/innovation/patents-other-ip-rights/applypatent/netherlands/costs

5 http://www.uspto.gov/trademarks-getting-started/trademark-basics/trademarkpatent-or-copyright
6 https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm#2 article 16

2.
A) Parallel or grey imports are goods that are imported into a country, with
identical trademarks, often identical goods, but that have been made for a
foreign market and imported without authorization of the holder of the trademark
1. Commonly this means goods that are cheaper in a foreign market or
unavailable in the domestic market are being imported to increase profit margin
or to make goods available that are otherwise unavailable in the domestic market
because the good was not intended for that market or has no licensed retailers.
B) The exhaustion of rights doctrine is a patent law doctrine, also called the first
sale law, means that a holder of intellectual property has intellectual property
rights over the first authorized sale, but no longer when sold again. There is a
distinction between national, regional exhaustion and international exhaustion 2.
National exhaustion means the holder of intellectual property has no right to
control the commercial exploitation in that particular country, for example price
fixing, after sale. The United States v. Univis lens Co. case is used in the US as
landmark case 3. Regional exhaustion means that a good that is sold in a country
in a certain region like Europe the exhaustion doctrine is applicable in the whole
region. To clarify, if a Dutch company sells a trademarked product to Belgian
company the exhaustion of rights are applied in the whole of Europe.
International exhaustion means that the exhaustion doctrine not only applies in a
country or region but internationally.
The exhaustion of rights doctrine only applies when an authorized sale is made,
so only with the intellectual property holders consent.

C) Can a company prevent parallel imports from another EU country?

A company can only prevent parallel imports if the intellectual rights are not
exhausted, even domestic exhaustion, as with domestic exhaustion you lose the
rights of importation 2. In the EU the free movement of goods play a role as well
as stated in article 30 of the Treaty of Rome Quantitative restrictions on imports
and all measures having equivalent effect shall, without prejudice to the following
provisions, be prohibited between Member States 5. As intellectual property
rights might interfere with this article the European court of justice has made the
following statement In cases where products were marketed by the patentee or
with his consent in countries of the European Union where no patent was or could
have been obtained, the ECJ nevertheless assumed exhaustion.
It can be assumed that it is nearly impossible to defend a company that tries to
prevent parallel imports within the EU, as the first sale entails exhaustion, in
which the intellectual property rights are diminished.

1 http://scholarlycommons.law.northwestern.edu/cgi/viewcontent.cgi?
article=1215&context=njilb
2 http://www.wipo.int/sme/en/ip_business/export/international_exhaustion.htm
3 http://caselaw.lp.findlaw.com/scripts/printer_friendly.pl?page=us/316/241.html
4 http://www.wipo.int/edocs/mdocs/sme/en/atrip_gva_99/atrip_gva_99_6.pdf
heading 4
5 http://www.eurotreaties.com/rometreaty.pdf
D) http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:61974CJ0015

In the case Centrafarm BV and Adrian de Peijper v. Sterling Drug Inc., The Dutch
Hoge Raad asked the European court of Justice to answer questions with
regard to a reference in the EU treaty of Rome on trade mark rights for a
preliminary ruling.