According to the principle of exhaustion within the meaning of § 24 par. 1 MarkenG and Art. 15 par. 1 UMV, a trademark owner cannot prohibit the use for goods, among others, if the goods have been put on the market with his consent by another party – for example, by a licensee, by the parent company or the subsidiary of the same group or by an exclusive distributor (see BGH, judgment of February 3, 2011 – I ZR 26/10) – under this trademark in Germany, in the EU or in the EEA.
In the leading decision “myboshi” (BGH, judgement of 25.03.2021 – I ZR 37/20) the BGH ruled that in such a constellation a putting on the market can also be present by a (later) sale of goods bearing the trademark to a third party who already has the goods in her possession, if the sold goods are stored separately from the other goods bearing the trademark at the third party and are marked accordingly and are thus sufficiently specified. In this context, the BGH clarified that the consent of the trademark owner required for the occurrence of exhaustion can be given not only in advance (as consent), but also afterwards (as authorization), as by the very subsequent sale of the specific goods to the third party.
In the case in question, the defendant, which was held liable by the trademark owner, imported and stored wool and yarn as a logistics company, including on behalf of a licensee of the trademark owner for goods marked with the licensed trademark. In one case, the defendant resold a batch of stored licensed goods. The defendant, who had therefore been sued by the trademark owner, claimed that it had received and settled an invoice from the licensee for the disputed goods months later. The BGH considered this exhaustion objection to be conclusive, since the required consent can also be granted subsequently.
The decision makes it clear that license partners should coordinate carefully when taking action against third parties for non-exhausted original goods.