Trademark Exhaustion and Free Movement of Goods: A Comparative Analysis of the EU/EEA, NAFTA and ASEAN

In this chapter, I address the relationship between the principle of trademark exhaustion and the free movement of goods in free trade areas. In particular, I analyze the existing approaches to trademark exhaustion and parallel imports in the following free trade areas: the European Union (EU), or rather the European Economic Area (EEA); the North American Free Trade Area (NAFTA); and the Association of Southeast Asian Nations (ASEAN). The results of this analysis highlight the different approaches that countries that are members of a free trade area may choose regarding national policies on trademark exhaustion—i.e., national, international, or regional trademark exhaustion as I explain below—and how these policies directly impact the free movement of goods within the free trade area. In particular, I note that it is only when all countries that are members of a free trade area consistently adopt a principle of international or regional trademark exhaustion that goods can freely move amongst these countries. Still, as the case of the EU/EEA demonstrates, the approach that countries adopt with respect to trademark exhaustion can also evolve over time and lead to a unified approach only at a second stage, particularly when the members of a free trade area agree to achieve a higher level of economic integration. In these instances, members of free trade areas are more likely to adopt a unified approach on trademark exhaustion that facilitates the free movement of goods within the free trade area. Other contributions in this volume comprehensively address the alternative approaches to intellectual property exhaustion. Building on these contributions, in section II, I elaborate on the principle of trademark exhaustion in the EU/EEA. In this section, I note that market integration has historically been a priority in the EU, thus EU law explicitly imposes a consistent approach on exhaustion to all EU/EEA Member States in order to promote free movement of goods and the internal market. In section III, I analyze the rules on trademark exhaustion in NAFTA. In this section, I note that, unlike in the EU/EEA, NAFTA members never intended to create a NAFTA internal market, thus, each NAFTA member follows its own system of choice on trademark exhaustion. Still, all NAFTA members have adopted the principle of international trademark exhaustion, which in turn permits the free movement of trademarked goods within NAFTA. Last, in section IV, I elaborate on the approach(es) adopted by the countries that are members of ASEAN. In this section, I stress that ASEAN members adopt a principle of non-interference with respect to national exhaustion policies (ASEAN members generally follow the principles of consensus and non-interference, referred to as the “ASEAN way,” as a general principle, not only with respect to intellectual property-related issues). In this section, I also note that, to date, ASEAN members follow different approaches on trademark exhaustion. Notably, several ASEAN members follow international exhaustion, while other members are silent on the issue or adopt the principle of national exhaustion. Differently than the situation in the EU/EEA and NAFTA, however, the approach adopted by ASEAN members ultimately results in preventing an effective free movement of trademarked goods within ASEAN