On July 1, 1997, the Supreme Court rendeded a judgment affirming a Tokyo
High Court judgment permitting parallel import of aluminum wheels manufactured
and first sold in Germany.
The plaintiff, BBS, a German corporation, is the patentee of a certain
patent covering aluminum wheels used for such automobiles as BMW. The defendant
obtained genuine patented aluminum wheels sold outside Japan and imported
them to Japan. At the first instance, the Tokyo District Court rendered
a judgment enjoining the defendant from importing the patented wheels.
However, the Tokyo High Court reversed it and dismissed the claim of BBS.
BBS appealed to the Supreme Court.
The Supreme Court affirmed the Tokyo High Court judgment on the ground
that BBS had not reserved any right when it had first placed the patented
wheels in the German market. According to the Court, however, the patentee
could have reserved the right to excercise its patent right on the very
patented products it placed in a foreign market if it had imposed contractual
obligation on the purchaser in that market not to re-sell them to Japan
and the procucts had borne a notice to the effect that they were not intended
to be sold for the Japanese market.
The Court explained that it reached its conclusion balancing the benifit
of the patentee and the world-wide free movement of goods. Thus, it distinguished
its position from the doctrine of international exhaustion. Therefore,
the conclusion should depend on how the patented products have been placed
in a foreign market, but it would not depend on whether the patentee has
a patent corresponding to the Japanese patent in that country.