Examining EU circular economy steps, this study addresses spare parts' trademark and patent challenges and explores exhaustion doctrine constraints in repairing IP-protected products. The objective is to propose solutions to align the current IP legislative framework with circularity goals.
Last Update: 06.03.24
The study delves into the recent initiatives of the EU legislator in the realm of the circular economy, branching into two primary directions. Firstly, it scrutinizes the challenges arising from IP protection within the spare parts sector. Secondly, it evaluates the limitations encountered by the exhaustion doctrine when applied to products protected by IP undergoing repair. While challenges cut across all IP rights, the study focuses on trademarks and patents. The overarching goal is to offer solutions that align with circularity objectives while operating within the existing legislative framework for IP. Againist this backdrop, the first chapter explores relevant EU legislative and policy documents on circular economy, with a focus on the New Circular Economy Action Plan and the proposed directive on products’ repairability. The second chapter delves into the ongoing debate surrounding the protectability of spare parts, highlighting the absence of a repair clause for trademarks and the challenges posed by fragmented case law on limitations of trademarks. Patent rights and their impact on spare parts, including reproduction, use, and supply, are scrutinized in the subsequent sections. The third chapter concentrates on repair as a service, evaluating the exhaustion doctrine's role and limitations, particularly regarding products which have been manipulated after their initial lawful placement on the market. A detailed analysis is conducted on the limited and long-standing case law attempting to distinguish between lawful repair and unlawful manufacture, which integrates a legitimate ground for opposition by the proprietor, while also drawing attention to the inherent limits of such an approach. The study concludes with a final chapter presenting concluding remarks and proposals. Suggestions include prioritizing trademark limitations in jurisprudential interpretation, advocating for a radical solution to address non-registrability of trademarks for spare parts made in bad faith to hinder competition, and proposing an objective interpretation of indirect infringement requirements for patents. Additionally, the study calls for the admissibility of conduct aimed at reviving patented products and single components that have reached the end of their lifecycle, as long as it complies with the general principles of fair and honest commercial practices. Finally, a critique of the functional doctrine for trademarks is provided, calling for a consistent interpretation of the exhaustion doctrine and proposing measures to safeguard IP functions, while acknowledging the importance of circularity interests deserving equal protection.
Margherita Corrado
Professor Giovanni Strampelli, Bocconi University, und Professor Marco Saverio Spolidoro, Catholic University of Milan
Funktionen, Zielsetzungen, Werte und Wertungskriterien
