In case C-367/21 before the Court of Justice of the European Union (CJEU), the Regional Court of Warsaw, Poland, makes a reference for a preliminary ruling in a dispute between Hewlett Packard Development Company LP (HP) and Senetic S.A., a computer equipment distribution company. HP, which holds exclusive rights to certain European Union trademarks, markets computer equipment products through a network of authorized distributors, who undertake to sell these products only to end users or to other members of the distribution network and to purchase the products exclusively from other authorized members or from HP. 

Senetic introduced into Poland products marked with HP trademarks, purchased from sellers within the European Economic Area (EEA) that are not part of HP’s official distribution network after having received assurances from the sellers that the HP trademark can be legally marketed in the EEA. Senetica attempted to contact HP’s representative to confirm whether the product could be marketed without infringing exclusive rights, but received no response.  

 Senetic argues that the products were previously marketed in the EEA by HP or with its consent, which would result in the exhaustion of HP’s trademark rights and therefore HP could not oppose their further commercialization. 

The Polish court highlights the practical difficulty for an independent distributor such as Senetic to prove that the specific products have been placed on the market in the EEA by the trademark holder or with its consent, especially given the lack of a marking system identifying the target market of the products and the reluctance of suppliers to disclose their sources of supply. 

The Warsaw Regional Court referred the interpretation of the EU Trademark Regulation in relation to the distribution of marked goods and the burden of proof of exhaustion of the right conferred by the trademark, especially in a context where the product has been acquired in the EEA, the seller’s assurance has been obtained that the trademark can be lawfully marketed in the EEA, where the trademark owner uses a selective distribution network and provides no means to verify the legality of the marketing of the goods in the territory of the EEA. 

The CJEU responds to the question raised, indicating that EU law precludes the burden of proof of exhaustion of the rights conferred by an EU trademark from falling exclusively on the defendant in the infringement action under the circumstances described, thus offering an interpretation that seeks to balance the protection of Trade Marks rights with the free movement of goods within the internal market.   

This distribution of the burden of proof of the exhaustion of the rights offered by the trademark corresponds to the national court hearing the case, which must adapt the distribution to the specific circumstances of the case. 



C-367/21, JUDGMENT OF THE COURT (Tenth Chamber) of January 18, 2024