{"id":860,"date":"2016-10-19T15:55:31","date_gmt":"2016-10-19T13:55:31","guid":{"rendered":"https:\/\/www.litigation.rocks\/en\/?p=860"},"modified":"2016-10-19T17:47:02","modified_gmt":"2016-10-19T15:47:02","slug":"an-effective-weapon-in-the-battle-against-counterfeits-new-options-in-the-transit-of-goods","status":"publish","type":"post","link":"https:\/\/www.litigation.rocks\/en\/newsblog\/an-effective-weapon-in-the-battle-against-counterfeits-new-options-in-the-transit-of-goods\/","title":{"rendered":"AN EFFECTIVE WEAPON IN THE BATTLE AGAINST COUNTERFEITS – NEW OPTIONS IN THE TRANSIT OF GOODS"},"content":{"rendered":"

The most recent issue of the German periodical \u201cZoll aktuell\u201d (issue no. 4\/2016, page 15) reports on a typical case of counterfeit goods in transit under the heading \u201cMega seizure at Frankfurt Airport\u201d:<\/p>\n

\u201cOur colleagues at Frankfurt Airport<\/strong> seized tons of counterfeit goods valued at approx. Euro 24.9 million, ranging from sports to electronic articles and luxury articles made by 137 different brand manufacturers. [\u2026] All of the seven shipments weighing 15.5 tons in total originated from China<\/strong> and were addressed to recipients in Russia<\/strong> and Ukraine<\/strong>. \u00a0The colleagues could detain the counterfeit goods due to a new EU regulation<\/u><\/strong>: Since March 2016 it has been admissible to detain shipments in transit if the goods are suspected of infringing EU trade marks and the right holders concerned are entitled to prevent the placing of the goods on the market of the country of final destination.\u201d<\/p>\n

According to the previous case-law of the Court of Justice of the European Union, the mere transit of goods does not constitute a trade mark infringement in the EU as long as the goods are not placed on the EU market. \u00a0Until recently, without further indications the customs authorities could neither take enforcement measures against such goods in transit on the basis of national laws nor could they do so on the basis of the Anti-Piracy Regulation (EU No 608\/2013<\/a>). Customs authorities and trade mark owners could take action in exceptional cases only where there were certain indications that the goods were placed on the EU market (cf. CJEU, judgement of December 1, 2011, C-446\/09 and C-495-09, para. 61 \u2013 Philips\/Nokia).<\/p>\n

So on what kind of \u201cEU regulation\u201d did the Frankfurt customs authorities base their detention of the goods in transit on their way from China to Russia\/Ukraine?<\/p>\n

It is Article 9 (4) of the new EU Trade Mark Regulation<\/a>. This regulation entered into force in March 2016. In simple terms, it classifies goods in transit originating from third countries as pirated goods if the goods bear a trade mark which is identical or essentially identical with an EU trade mark. Unlike before the customs authorities no longer need to suspect that the goods infringe a trade mark. Rather, the declarant or the holder of the goods must set forth and prove in specific proceedings that no right has been infringed in the country of final destination<\/u><\/strong> (in this case: Russia and Ukraine).<\/p>\n

This allocation of the burden of proof, involving costs and practical difficulties, shows that the legislator really provided for an effective weapon in the battle against counterfeit products. We discussed in our lectures held at the event \u201ePreventing brand and product piracy at trade fairs\u201d on September 27, 2016 at the D\u00fcsseldorf Chamber of Industry and Commerce that this provision may also be useful as a preventive measure in the war against counterfeit products at trade fairs.<\/p>\n

However, it is evident which disadvantages this provision may have for reputable businesses and their goods in transit in individual cases. In addition, the new provision raises many legal issues which must be clarified by national courts and ultimately by the CJEU. \u00a0For the time being, only the texts of the EU Trade Mark Regulation and the Guidelines of the European Commission of 5 July 2016<\/a> are available.<\/p>\n

Practical relevance: <\/strong><\/p>\n