Sale of cosmetic testers by online shops and infringement of exclusive trade mark rights

Beauty manufacturers offer free samples of cosmetics to potential customers to showcase the product, to allow the customer to evaluate it, as well as to encourage them to purchase their products. Providing the opportunity to test a product is particularly important when selling perfumes. Perfume shops display flasks labeled 'not for sale', 'demonstration' or 'tester' on their shelves, allowing customers to experience the scent of the product.

Trademarking cosmetic samples

Cosmetics are often labelled with the trademarks of well-known and reputable brands. It is worth mentioning here that a trade mark can be a name, a logo or even a combination of certain colours or a specific colour. Well-known and popular brands usually strive for maximum protection of their trademarks and therefore register their trademarks in the European Union as well as in specific countries. Thanks to the trade mark registration, in the event of an infringement of the trade mark, its owner is granted specific rights aimed at stopping the infringement. Manufacture of cosmetics with the name or logo of a particular brand usually takes place on the basis of a licence granted by the trade mark owner and cosmetics bearing the brand are marketed on the basis of the granted licence.

Marketing of cosmetics and exhaustion of trade mark rights

Cosmetics placed on the market, bearing a particular brand name, may subsequently be resold and further marketed. On the other hand, the trade mark owner cannot prohibit the resale and further circulation of products bearing that trade mark. This rule is known as trade mark exhaustion. In Poland, it is regulated in Article 155(1) of the Industrial Property Law Act, while in the territory of the European Economic Area it is regulated in Article 15(1) of the Regulation of the European Parliament and of the Council of Europe (EU) 2017/1001 on the European Union trade mark.

In both Polish and European law, there are also a number of possible negative grounds for exhaustion of trade mark rights. The presence of these grounds disapplies the exhaustion rule and entitles the trade mark owner to oppose further distribution of copies of goods bearing a particular mark, despite the products having been previously placed on the market with its consent. This is the case if there are legitimate reasons to oppose further distribution, in particular if the condition of the goods changes or deteriorates after placing them on the market. Examples of such legitimate reasons could be:

• depriving the goods of their outer packaging or protective film;
• removal of the stopper (in case of a perfume flask);
• repackaging the goods;
• masking the origin of the goods;
• damage to the reputation of the trade mark.

Conclusion

Cosmetics labelled "not for sale", "demonstration", or "tester" are not covered by exhaustion of trade mark rights because they are not intended by the trade mark owner to be resold. Trading in cosmetics of renowned brands without protective film, packaging, repackaging or with masking stickers, on the other hand, may constitute a negative ground for exhaustion of the trade mark protective right. In particular, the marketing of products of reputable brands with damaged, altered or incomplete packaging may infringe upon this reputation. In such situations, the trade mark owner may be able to challenge further distribution of products bearing a particular trade mark.

The sale of cosmetic testers by online shops may constitute trade mark infringement and thus entitle the trade mark owner to take action leading to the withdrawal of goods from the market, damages for infringement of the protection right or destruction of the goods. Thus, before placing such products on the market, it is advisable to make sure that the rights of the owner of the protected trade mark will not be infringed. Reasonable action will help avoid harsh consequences and possible financial losses.

advocate Anna Krankowska