Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for distribution within the EU, it had no power to detain them. The goods were agreed to be fake, but no evidence of the identities of the people involved had beeen established.
Held: Case law established that it was for the mark owner to establish that the goods would be districuted as required: ‘infringement of registered trade mark requires goods to be placed on the market and that goods in transit and subject to suspensive customs procedures do not, without more, satisfy this requirement.’
The Directive had not intended to extend the powers of mark owners in the way suggested. ‘in order for products bearing trade marks to be counterfeit goods within the meaning of the Counterfeit Goods Regulation they must in fact infringe someone’s trade marks in the territory in question. ‘
Judges:
Kitchin J
Citations:
[2009] EWHC 1903 (Ch), [2009] ETMR 59, (2009) 32(8) IPD 32054
Links:
Statutes:
Council Regulation 1383/03, The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473), Council Regulation (EEC) No 2913/92, Council Directive 89/104
Jurisdiction:
England and Wales
Citing:
Cited – The Polo/Lauren Co LP v PT Dwidua Langgeng Pratama International Freight Forwarders Case ECJ 14-Apr-2000
Council regulations empowered customs officers of member states to seize goods suspected of being counterfeit or pirated and in breach of Trade Mark and other laws This applied even to goods which were merely seized in transit through a member . .
Cited – Montex Holdings v Diesel (Free Movement Of Goods) ECJ 9-Nov-2006
Montex sold jeans in Ireland where the mark Diesel was not protected. The jeans were made by the manufacture of pieces in Ireland (including pieces with the mark on), exporting them under a customs seal procedure to Poland where they were made up . .
Cited – Rioglass and Transremar (Judgment) ECJ 23-Oct-2003
Motor car windows bearing the trade marks of a number of French motor car makers were lawfully made in Spain. Under a customs suspensive procedure they were being exported outside the EU to Poland. French Customs seized them whilst in transit in . .
Cited – Class International v Colgate Palmolive ECJ 18-Oct-2005
ECJ Trade marks – Directive 89/104/EEC – Regulation (EC) No 40/94 – Rights conferred by the trade mark – Use of the mark in the course of trade – Importation of original goods into the Community – Goods placed . .
Cited – Eli Lilly and Company and Another v 8PM Chemist Ltd CA 5-Feb-2008
The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Customs and Excise, European
Updated: 21 October 2022; Ref: scu.368643
