The Court of Justice of the European Union with its judgement of 6th February 2013 (Case C-98/13) added another pillar to the “fence” against counterfeit or pirated goods, preventing them being placed on the EU market.

In January 2010 a consumer resident in Denmark (Mr Blomqvist), bought a watch described as a “Rolex“ from the English webpage of a Chinese on-line shop. The watch was sent from Hong Kong by post. The Danish custom authorities suspended the customs clearance of the watch, suspecting that it was a counterfeit, and informed Rolex and the buyer.

Rolex requested to confirm the clearance suspension and asked the buyer to accept destruction without compensation of the counterfeited watch. The buyer refused contending that he had purchased it legally and Rolex brought an action before the Sø- og Handelsretten (Maritime and Commercial Court) which granted its claim. Mr Blomqvist appealed the decision before the Højesteret (Supreme Court).

The European “fence”, in this case, is made by the Council 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 together with Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, the Council Regulation No 207/2009 of 26 February 2009 on the Community trade mark and the Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

There was no dispute on the fact that the watch was actually a counterfeit product, that Mr Blomqvist bought his watch for personal use and for that reason did not breach Danish law on copyright and trade mark.

That Danish Supreme Court raised the question whether, in the above situation, there had been an actual infringement of an intellectual property right according to Regulation (EC) No 1383/2003. In fact this Regulation requires, for its application, first, a breach of copyright or of a trade mark right protected in a Member State (here Denmark) and, second, that the alleged breach having taken place in the same Member State. To that regard, in the present case, it was crucial to determine whether there was any distribution to the public, within the meaning of the copyright directive, and any use in the course of trade, within the meaning of the trade mark directive and the trade mark regulation.

Coming to the main question answered by to Court this concerned whether a holder of intellectual property rights, such as Rolex, may claim the same protection for its rights where the goods at issue were sold from an online sales website in a non-member country (China or Hong Kong) on whose territory that protection granted by the European legislation is not applicable.

Though recalling that the mere accessibility of a website from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory ( L’Oréal and Others , par 64), the Court gave a positive answer to the above question, stating that:

Council 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 must be interpreted as meaning that the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.

In a few words, the holder of an intellectual property right which receives protection in the European Union, deserves that protection also against ‘counterfeit goods’ or ‘pirated goods’ coming from a non-member State for the very (and simple) fact that those goods are directed to a customer residing in Member State of the European Union, no matter if, before the sale,  an offer for sale or advertising targeting consumers of that State have taken place.

First posted on F on  – Avv. Pierantonio Paulon, LLM  © All rights reserved