A court of law in Amsterdam refused to recognize a judgment issued by a Bulgarian court on grounds of public policy. The Dutch court established that, when ruling on a Bulgarian case concerning unauthorized by the trademark owner import of goods from outside the EU, the Sofia City Court based its decision exclusively on the Interpretative Decision No. 1 of 2009 of the Supreme Court of Cassation (Interpretative Decision No. 1) whereby it was decided by the majority votes of the judges that the consent of the trademark owner is not necessary for the import. Therefore the Sofia City Court ruled that the import of genuine goods without the consent of the trademark owner from outside the EU or EEA shall not be considered an infringement of rights. The Amsterdam court however concurred with the opinion of the trademark owner that when issuing its Interpretative Decision No. 1 the Bulgarian Supreme Court of Cassation should have requested a preliminary ruling from the CJEU, referring to the dissenting opinion of five of the Supreme Court judges, which mentioned a violation of EU law. By failing to request a preliminary ruling, and at the same time by going against the established case-law of the CJEU, as enunciated in the Silhouette case, the Bulgarian Supreme Court acted contrary to a fundamental principle of Community law which forms part of Dutch public policy. The Amsterdam court therefore dismissed the importer’s claims which were based on the Sofia City Court’s judgment.
The above hard determination against the recognition of a ruling of an EU court on the grounds of public policy, which happens very rarely, actually came after the Order of the Court of Justice of the EU (CJEU) from October 28th, 2010 in case C-449/09, Canon, had been delivered. The Order was issued on request for a preliminary ruling sent to the Court by the Sofia City Court sitting on a case between the Japanese company Canon Kabushiki Kaisha and a Bulgarian company I.P. N Bulgaria Ltd. In its Order the Court reached the same conclusion as that of the Dutch court – the Interpretative Decision No.1 of the Bulgarian Supreme Court of Cassation is contrary to the main solutions reached already by the Court on questions on exhaustion of rights on registered trademarks. The Court referred to a number of judgments whereby Art.5 and Art.7 of the First Council Directive 89/104/EEC of 21 December 1988 on cohesion ofthe laws of the Member States relating to trade marks (the Directive on trademarks) have been interpreted, amongst which the Silhouette case is expressly cited, as well as others cases such as Class International (C‑405/03); Zino Davidoff and Levi Strauss,(C‑414/99—C‑416/99); Van Doren + Q, (C‑244/00);Peak Holding,(C‑16/03). In conclusion the Court ruled that Art.5 of the Directive ontrademarks shall be interpreted as entitling the trademark owner to refuse his consent when genuine goods bearing his registered trademark are to be put on the market in the EEA for the first time.
After the above developments of Bulgarian cases on exhaustion of trademark rights, and more than half a year since the Supreme Bar Council of the Republic of Bulgaria has filed a request for revocation of Interpretative Decision No.1, the Supreme Court of Cassation has now finally announced that itsgeneral meeting of the commercial department will gather to decide on whether that interpretative decision has lost its legal effect, in other words– does it have to be revoked. The unacceptable situation created bythe adoption of Interpretative Decision No.1whereby, on the one hand, all Bulgarian courts and institution are obliged to follow and apply the interpretation given by the Supreme Court, and on the other hand , all CJEU judgments are obligatory on Bulgarian courts and institutions, should have been quickly resolved. Because it is the Court of Justice that interprets EU law to ensure it is applied in the same way in all EU countries!
It should be mentioned however that together with the issue of revocation of Interprretative Decision No.1 a new question has been put forwardon which the judges from the general meetingof the commercial department of the Supreme Court of Cassation will have to rule. The question is whether the rights conferred by the trade mark are exhausted once the product has been put on the market in the EEA and no further consent is to be sought from the trademark owner, or such consent must relate to each individual item of the product in respect of which exhaustion is claimed. What is strange in raising that question now is that the CJEU has already given the answer requested (we refer to the Sebago case (Case С-173/98). And it follows from the unpleasant story above that what is absolutely necessary for Bulgarian judges is to be well acquainted with the EU law and to apply it correctly following the case-law of the CJEU.
Линк към статията на български език: НЕ СЕ ЛИ ИЗЧЕРПИ ВРЕМЕТО ЗА РАЗМИСЪЛ ИЛИ КАК В БЪЛГАРИЯ СЕ РАЗБИРА И ПРИЛАГА ПРИНЦИПЪТ НА ИЗЧЕРПВАНЕ НА ПРЕДОСТАВЕНИТЕ ОТ ТЪРГОВСКА МАРКА ПРАВА
 Attorney-at-law. Partner at the Sofia based law firm Borislav Boyanov & Co.