[pp.int.general] Fwd: [The IPKat] When is a fake not a fake? When it's not on sale in Europe ...
Amelia Andersdotter
teirdes at gmail.com
Fri Dec 2 01:13:49 CET 2011
praised be the lord! extra-territorial application of EU law is /not/
allowed with respect to counterfeits, says ECJ. they just keep handing
us a good future this week.
-------- Original Message --------
Subject: [The IPKat] When is a fake not a fake? When it's not on sale
in Europe ...
Date: Thu, 01 Dec 2011 11:40:23 +0000
From: Jeremy <jjip at btinternet.com>
Reply-To: jjip at btinternet.com
To: ipkat_readers at googlegroups.com
<http://1.bp.blogspot.com/-2fz2Zs5aVcY/TtdnRPSR3PI/AAAAAAAATfg/MlRxP8Mtsno/s1600/crying-cat.jpg>
/"How can they do this to me ...!"/
*This morning the Court of Justice gave its ruling *in Joined Cases C
446/09 /Koninklijke Philips Electronics NV v Lucheng Meijing Industrial
Company Ltd, Far East Sourcing Ltd, Röhlig Hong Kong Ltd, Röhlig Belgium
NV and Nokia Corporation/ and and C 495/09 /Nokia Corporation v Her
Majesty’s Commissioners of Revenue and Customs, International Trademark
Association intervening. /These are a couple of extremely controversial
references from, respectively, the Rechtbank van eerste aanleg te
Antwerpen and from the Court of Appeal (England and Wales). The*Advocate
General's Opinion*
<http://curia.europa.eu/juris/liste.jsf?num=C-446/09&language=en#>
(noted***here*
<http://ipkitten.blogspot.com/2011/02/faking-it-or-beyond-suspicion.html>by
the IPKat) was given as long ago as 3 February, which means that the
Court of Justice has been agonising over what to do for nearly twice as
long as it usually does. Those poor judges must really have had their
serenity shattered, says Merpel.
Today's ruling is 8,500 words in length and will take a bit of
digesting. Merpel kindly suggested that the IPKat begin reading from the
start while she begins reading from the end, so they can meet in the
middle. While that's not as silly an idea as it seems, since the basic
law and facts are at the beginning and the ruling is at the end, the
Kats agreed that the best point from which to start was the excellent
Curia media release, which states as follows:
"*The Court specifies the conditions under which goods coming from
non-member **States that are imitations or copies of goods protected
in the EU by intellectual **property rights may be detained by the
customs authorities of the Member States *
/Where those goods are in customs warehousing or in transit in the
EU, they can be classified as //‘counterfeit’ or ‘pirated’ goods if
it is proven that they are intended to be put on sale in the EU /
These two cases concern the interpretation of the EU rules on the
conduct of customs authorities faced with possible infringements of
intellectual property rights by goods coming from non-member States
that are placed in external transit or customs warehousing on the
customs territory of the EU*[From a technical legal perspective this
is true. But IP owners aren't concerned about the conduct of customs
authorities -- they're concerned about the conduct of people who are
shifting fakes and counterfeits around, under their very noses].*
Those suspensive procedures enable non-Community goods to avoid
being subject to import duties and other taxes or to commercial
policy measures.
/The facts in Case C-446/09/
In 2002, the Belgian customs authorities inspected a cargo – which
lacked a stated destination and was warehoused in the port of
Antwerp (Belgium) – of electric shavers from Shanghai
(China) resembling designs of shavers developed by Philips. Those
designs are protected by registrations granting exclusive
intellectual property rights to Philips in a number of States,
including Belgium. Suspecting that the goods were ‘pirated goods’,
the Belgian customs authorities detained them.
Philips brought an action against Lucheng Ltd, Far East Sourcing Ltd
and Röhlig Hong Kong Ltd, which were involved in the manufacture,
marketing and transport of those shavers .... Philips seeks
in particular a ruling that those undertakings infringed its
exclusive right over those designs. Philips also seeks an order that
those undertakings pay it damages and that the detained goods
be destroyed.
/The facts in Case C-495/09 /
In July 2008, the customs authorities of the United Kingdom (HM
Revenue & Customs, ‘HMRC’) inspected a consignment of goods – mobile
telephones and mobile telephone accessories – at London Heathrow
Airport (United Kingdom) which had come from Hong Kong (China) and
was destined for Colombia. Those goods bore a sign identical to a
Nokia trade mark. Suspecting that the goods were fake, HMRC sent
samples to Nokia, which confirmed that the goods were indeed fake
and asked HMRC to detain the consignment.
That request was refused by HMRC on the ground that goods in transit
from one non-member State to another cannot be regarded as
‘counterfeit goods’ for the purposes of European Union law and
therefore cannot be detained. Nokia challenged that refusal of
detention before the courts of the United Kingdom.
[The referring courts] ask the Court of Justice whether goods coming
from a non-member State which are in transit or stored in a customs
warehouse in the European Union, can be classified as ‘counterfeit
goods’ or ‘pirated goods’ for the purposes of European Union law
merely on the basis of the fact that they are brought into the
customs territory of the European Union, without being marketed or
sold there.
In its judgment delivered today, the Court first examines the
conditions for temporary detention of goods placed under a
suspensive procedure. It reiterates that goods from non-member
States placed under a suspensive customs procedure cannot, merely by
the fact of being so placed, infringe intellectual property rights
applicable in the European Union. However, those rights may be
infringed where, during their placement under a suspensive procedure
in the customs territory of the European Union, or even before their
arrival in that territory, goods coming from non-member States are
the subject of a commercial act directed at European
Union consumers, such as a sale, offer for sale or advertising *[The
IPKat didn't think that the advertising or offering for sale of
infringing goods that were not yet on EU territory was an issue in
this case]. *
In addition to the existence of such a commercial act, other
circumstances can also lead to temporary detention by the customs
authorities of the Member States. Thus, a customs authority which
has established the presence in warehousing or in transit of goods
which are an imitation or a copy of a product protected in the
European Union by an intellectual property right can legitimately
act when there are indications before it that one or more of
the operators involved in the manufacture, consignment or
distribution of the goods, while not having yet begun to direct the
goods towards European Union consumers, are about to do so or are
disguising their commercial intentions.
Such indications may include 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
consignor of the goods, a lack of cooperation with the customs
authorities or the discovery of documents or correspondence
concerning the goods in question suggesting that there is liable to
be a diversion of those goods to European Union consumers. Such
suspicion must, in all instances, be based on the circumstances of
each particular case*[While the need for each suspensive detention
to be considered on its own merits is obviously important when
determining whether customs authorities have acted unlawfully, it is
helpful for IP owners and customs authorities alike to receive clear
guidance in terms of broad principle as to whether a suspensive
detention is appropriate or not, if they are to make decisions and
carry them out under what can be severe pressure of time and without
necessarily having all the information they need in their possession
and in a form and language which they can conveniently understand]. *
Secondly, the Court specifies the material which the competent
authorities must have before them in order to ascertain that goods
already detained infringe European Union intellectual
property rights. Thus, the Court considers that goods in respect of
which it is not proven, after substantive examination, that they are
intended to be put on sale in the European Union cannot be
classified as ‘counterfeit goods’ and ‘pirated goods’ *[So if it is
clear that the fake goods are 100% destined for a non-EU
jurisdiction like Colombia, they're not counterfeit or pirate at
all. How fortunate for the consumers in the destination market! And
how miserable for the IP rights owners, who may find their prospects
of exporting to those markets destroyed, along with their
credibility and their goodwill]*.
Certain evidence enables such an infringement to be proved,
including, in particular, the existence of a sale of goods to a
customer in the European Union, of an offer for sale or
advertising addressed to consumers in the European Union, or of
documents or correspondence concerning the goods in question showing
that diversion of those goods to European Union consumers is envisaged.
Finally, the Court states that, in the absence of proof of
infringement of an intellectual property right, goods placed under a
suspensive procedure in the European Union can, as appropriate, be
seized in other situations covered by the European Union Customs
Code, such as where the goods in question pose a risk to health and
safety *[What a crumb of comfort ...]*".
The full wording of the active part of today's ruling reads like this:
"Council Regulation ...3295/94 ..., as amended by Council Regulation
... 241/1999 ... 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:
– 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;
– 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 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;
– 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 consignor of the goods, a lack of cooperation with
the customs authorities or the discovery of documents or
correspondence concerning the goods in question suggesting that
there is liable to be a diversion of those goods to European Union
consumers".
Readers may gain the impression that the IPKat is not entirely happy
with this ruling. He can't blame the court since it is required to
interpret and apply the law before it. He very much hopes that the
proposed reforms of the EU's suspensive detention laws, discussed at
length in an *excellent article by Olivier Vrins
<http://jiplp.oxfordjournals.org/content/early/2011/10/03/jiplp.jpr140.full.pdf+html>*(Altius)
in the November 2011 issue of the /Journal of Intellectual Property Law
and Practice /(*JIPLP <http://jiplp.oxfordjournals.org/>*), "The
European Commission's proposal for a regulation concerning Customs
enforcement of IP rights", will correct the deficiencies of policy and
functionality which so adversely affect the current system.
The full text is promised *here*
<http://curia.europa.eu/juris/liste.jsf?language=en&num=C-446/09>, but
at the time of posting this piece only the Advocate General's Opinion
was available on the Curia's smart, new and totally unfamiliar InfoCuria
website. In the meantime you can read it in full, in English, *here
<https://sites.google.com/site/ipkatreaders/judgments/C-446-09C-49509arr%C3%AAtEN.docx?attredirects=0&d=1>*.
--
Posted By Jeremy to The IPKat
<http://ipkitten.blogspot.com/2011/12/when-is-fake-not-fake-when-its-not-on.html>
on 12/01/2011 11:40:00 AM --
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