TRADEMARK LAW – CUSTOMS SEIZURE
Not ‘counterfeit goods’ within the meaning of the regulation when brought into customs territory under suspensive procedure
• goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design cannot be classified as ‘counterfeit goods’ or ‘pirated goods’ within the meaning of those regulations merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure;
Counterfeit goods: where proven that they are intended to be put on sale in the EU
• those goods may, on the other hand, infringe the right in question and therefore be classified as ‘counterfeit goods’ or ‘pirated goods’ where it is proven that they are intended to be put on sale in the European Union, such proof being provided, inter alia, where it turns out that the goods have been sold to a customer in the European Union or offered for sale or advertised to consumers in the European Union, or where it is apparent from documents or correspondence concerning the goods that their diversion to European Union consumers is envisaged;
Suspension of release of goods for examination of infringement; grounds for suspecting infringement
• in order that the authority competent to take a substantive decision may profitably examine whether such proof and the other elements constituting an infringement of the intellectual property right relied upon exist, the customs authority to which an application for action is made must, as soon as there are indications before it giving grounds for suspecting that such an infringement exists, suspend the release of or detain those goods; and
• those indications may include, inter alia, the fact that the destination of the goods is not declared whereas the suspensive procedure requested requires such a declaration, the lack of precise or reliable information as to the identity or address of the manufacturer or con-signor of the goods, a lack of cooperation with the cus-toms authorities or the discovery of documents or cor-respondence concerning the goods in question suggest-ing that there is liable to be a diversion of those goods to European Union consumers.
IPPT20111201, CJEU, Philips - Nokia
