Introduction

On 30 July 2025, the Spanish Supreme Court delivered a significant judgment interpreting Article 15 of the European Union Trade Mark Regulation 2017/1001 ("EUTMR"), which governs the exhaustion of rights conferred by a trade mark: 

"1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.

2 Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market."

The Court's reasoning was grounded in established case law from the Court of Justice of the European Union ("CJEU"). This judgment is of particular significance as it clarifies the meaning of "consent" within the context of trade mark exhaustion and provides important guidance on the allocation of the burden of proof in such matters.

Facts of the case

As for the facts of the case, four entities engaged in the distribution of products bearing the trade mark "Ron Barceló" brought proceedings for a declaration of non-infringement against the registered proprietor of the mark, namely Barceló Comercial Internacional S.A., and its distributor, Importaciones y Exportaciones Varma, S.A. The plaintiffs contended that the trade mark rights had been exhausted by virtue of their acquisition of genuine "Ron Barceló" products in the Netherlands that were originally introduced in the market of the European Economic Area (“EEA”) by the Ron Barceló group based in the Dominican Republic.

Legal reasoning

The Supreme Court reaches the following conclusions regarding the interpretation of Article 15 of the EUTMR: 

1. The burden of proof must be determined according to whether the place of first commercialization is known or unknown:

• When the first commercialization is unknown and exists a risk of market compartmentalization, for example through exclusive distribution systems (see CJEU judgment of 8 April 2003, Van Doren + Q, C-244/00) or selective distribution (see CJEU judgments of 18 January 2024, Hewlett Packard Development Company, C-367/21 and 20 December 2017, Schweppes, C-291/16), it shall be for the trade mark proprietor to prove that the right is not exhausted.
• Conversely, when the trade mark proprietor proves that it first commercialized outside the EEA, there is a presumption that the proprietor has not consented to the subsequent entry of products into the EEA market, placing the burden on the parallel importer to prove the trade mark proprietor's consent to commercialization within the EEA (see ECJ judgment of 20 November 2001, Zino Davidoff, C-414/99 to C-416/99). This latter point relates to the concept of consent which we shall examine below, within which passive attitudes do not fall.

2. As regards consent:

• This constitutes the subjective requirement which is a determining element and must be manifested in a manner that reflects with certainty the trade mark proprietor's intention to renounce its right. Indeed, for consent to exist, it is necessary that the trade mark proprietor authorizes commercialization and establishes the conditions of commercialization. 
• Consent may be granted expressly or impliedly. Tacit consent may be evidenced by circumstances prior to, contemporaneous with, or subsequent to introduction into the EEA; however, consent cannot be said to exist in situations where the trade mark proprietor has shown a passive attitude (see ECJ judgment of 20 November 2001, Zino Davidoff, C-414/99 to C-416/99, cases where there are no contractual reservations regarding the transmission of products from outside the EEA, or express opposition by the proprietor to commercialization, or absence of warnings by the trade mark proprietor that the product cannot be commercialized in the EEA should not be considered as falling within the concept of consent). In essence, it is understood that a proprietor grants consent when it has been able to control the commercialization of products by third parties. 
• It is not necessary for the consent to be renewed with each transmission of products within the EEA once they have been legitimately introduced in commerce for the first time. However, trade mark exhaustion is not an absolute rule, since if products undergo any alteration in relation to their quality or origin, the trade mark proprietor may oppose their resale pursuant to Article 15.2 EUTMR.

Key takeaways

This judgment serves as an important reminder to importers and distributors that passive conduct of trade mark proprietors will not constitute valid consent under Article 15 EUTMR. Additionally, the decision clarifies that the burden of proof allocation depends critically on whether the place of first commercialization is known, requiring businesses to maintain clear documentation of their distribution strategies and commercial arrangements to avoid costly litigation over trade mark exhaustion claims.

The full judgement of the Spanish Supreme Court can be read here.