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IP As Property / IP Rights Licensing / Gray Market Exhausted and Gray, but Still Going Strong: By Dennis S. Prahl, Esq.[1]
Introduction I. Defining the problem II. Preventing parallel imports under trademark law III. Exceptions to the Exhaustion Rule IV. Preventing parallel imports under other legal theories V. Practical steps to prevent parallel imports Introduction Trademark wars are most often waged against third parties
in the field of opposition, cancellation, infringement, unfair competition
or passing off proceedings. However, in the case of gray marketers and
parallel importers, trademark owners lament that "we have met the enemy,
and they are ours.” Such is the plight of parallel imports, also
known as "reimports" and "gray market goods", chiefly by their opponents,
presumably to insinuate some association with "black market" goods.
[2] Even though parallel importers are
usually third parties unrelated to the trademark owner, the source of
parallel imports is customarily the trademark owner or those within
his control.
[1] Partner Ladas
& Parry. Mr. Prahl is resident in the New York Office of the firm.
Copyright 2001 Dennis S. Prahl. All rights reserved.
[2] See Weil Ceramics
& Glass, Inc. v. Dash , 878 F.2d 659, 11 USPQ2d 1001 (3d Cir.
1989) "the term 'gray-market' unfairly implies a nefarious undertaking
by the importer, and.the term parallel import accurately describes the
goods and is, perhaps, a better term because it is devoid of prejudicial
suggestion... However...the term 'gray-market' goods...has become the
commonly accepted and employed reference to the goods at issue."
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