Slovenian entrepreneur was distributing Marc Jacobs Bang and Marc Jacobs Daisy perfumes to several stores in Slovenia. The perfumes’ packaging had no bar code and serial number; they had either been removed or covered by blank labels. On genuine products, bar codes and serial numbers provide information about their production, such as time and place. This information also enables the tracking of genuine products through distribution channels and helps to distinguish original products from counterfeits.
Exclusive Licensee of the trademarks initiated an action for trademark infringement requesting (1) the prohibition of further infringement; (2) the publication of the judgment; and (3) the payment of damages. Licensee argued that because the bar codes and serial numbers had been removed they could not determine the true origin of the products. Therefore, the defendant should bear the burden of proving that the goods were genuine and had been put on the EU market with the trademark holder’s consent.
In its judgment, the court followed licensee’s arguments regarding the burden of proof, holding that the defendant must prove that the decoded products were genuine including that they had been put on the EU market with holder’s or in this case licensee’s consent. The court concluded that the defendant failed to meet this burden and, consequently, there was an infringement of licensee’s trademark rights. The judgment became final as the defendant did not appeal the decision.
This judgment may have a significant impact on evolving Slovenian case law regarding counterfeit goods and parallel imports. This could mean that, in all future cases, goods will be considered as counterfeits where the defendant is unable to demonstrate the genuine and legal origin of the goods.