ECJ Rules On Counterfeits In Transit

In November 2009, the UK Court of Appeal of England and Wales and the Belgian Court of First Instance of Antwerp each referred questions to the Court of Justice of the European Union (the "ECJ") concerning the legal position of goods in transit through an EU Member State in which these goods infringe intellectual property rights (See, this Newsletter, Volume 2009, No. 11, p. 6). The questions relate to two distinct national procedures, but were joined before the ECJ. Advocate General Cruz Villalón (the "AG") delivered his opinion in these joined cases in February 2011 (See, VBB on Belgian Business Law, Volume 2011, No. 2, p. 7, available at www.vbb.com). The ECJ has now handed down its judgment (the "Judgment"), mainly confirming the opinion of the AG.

Court of Appeal of England and Wales

In the case before the Court of Appeal of England and Wales (Case C-495/09, Nokia v. HMCRC) UK customs officers had stopped and inspected during transit at Heathrow Airport a consignment of goods from Hong Kong which was destined for a consignee in Colombia. The goods bore a Community trade mark held by Nokia and Nokia confirmed that the goods were counterfeit. In its reference to the ECJ, the English court sought to establish whether goods in transit between two third countries can constitute 'counterfeit goods' or 'pirated goods' within the meaning of Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights (the "Customs Regulation"), if there is no proof that they will be put on the market in the EU.

The text of the Customs Regulation is not unequivocal about whether or not customs authorities can detain goods with transit status. In addition, the ECJ had already limited actions against goods in transit in the Montex judgment (Case C-281/05, See VBB on Belgian Business Law , Volume 2006, No 12, p. 4, available at www.vbb.com). This judgment did not involve the Customs Regulation, but was based on an interpretation of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. In Montex, the ECJ held that a trade mark proprietor is only allowed to oppose the transit of goods bearing its trade mark without its consent in an EU Member State in which its trade mark is protected if those goods are subject to the act of a...