In Rolex S.A. Geneve vs Porić (No. IV Pg 2582/2015 of November 16, 2015), the Circuit Court of Ljubljana very clearly held that importation of counterfeit goods into Slovenia by natural persons constitutes infringement even if the importer bought such goods for personal use and not with the intent of using them in commerce.
Slovenian Customs Authorities seized small quantities of allegedly counterfeit goods on three separate occasions within a short period of time (all in 2015) which were imported into the EU (Slovenia) by the defendant. The imported goods were confirmed as counterfeit by the plaintiff and holder of the IP rights in question.
The Customs Authorities seized shipments of counterfeit wristwatches in the name of the defendant which were on their way from China to Slovenia on March 31, 2015, June 16, 2015 and July 8, 2015. As a response to the defendant’s frequent importations, Rolex S.A. filed an infringement action against the importer before the Circuit Court in Ljubljana on July 30, 2015 and sought that the defendant’s actions be declared to be trademark infringement, that the defendant be prohibited from using the plaintiff’s trademarks in commerce and especially that the defendant be prohibited from purchasing on-line and importing wristwatches bearing trademarks belonging to Rolex S.A..
The plaintiff based its claims Articles 47 and 121 of the Slovenian Industrial property Act and Article 9 of Council Regulation (EC) No. 40/94 of December 20, 1993 on the Community trade mark which define the rights, legal remedies and effects which are conferred on the trademark owner by national or Community trademarks. The plaintiff also raised Case C-98/13 and its judgment of February 6, 2014 which was rendered by the Court of Justice (Blomqvist vs. Rolex).
The facts in C-98/13 were very similar to the case at hand as Mr. Blomqvist ordered a single, counterfeit wristwatch from a Chinese on-line store in January 2010. The wristwatch was seized by Danish Customs authorities when entering the country due to its questionable authenticity and potential infringement of IP rights. The defendant claimed in his defense that he bought the wristwatch for personal use and not with the intent of selling the item or using it in commerce. The Danish national court turned to the Court of Justice asking for clarification regarding the implementation of the holder’s IP rights in such cases, where a natural person imports small quantities of counterfeit goods into the EU with no intent of using such goods in commerce. The Court of Justice stated 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..."
This ruling represents a legal basis for claiming infringement for the act of importing counterfeit goods into Slovenia through an online marketplace even if the actual order is made with the intent of personal use and not for commercial purposes.
The present Slovenian judgment of the Circuit Court No. IV Pg 2582/2015 is therefore completely in accordance with the ruling in the Blomquist case and also builds on the Slovenian Higher Court Judgment No. V Cpg 2024/2014 of May 27, 2015. The Slovenian Higher Court in that judgment already indicated that importation of counterfeit goods into Slovenia through an online marketplace for personal use could be declared to be trademark infringement. However, the appeal of the IP rights holder in that particular case was denied for other (procedural) reasons.
This judgment (No. IV Pg 2582/2015) is important in that it finally clarifies material issues regarding infringement cases originating from Customs procedures where small quantities of goods are imported into an EU member state by natural persons without the intent of using the counterfeit goods in commerce (personal use). The judgment makes it easier for trademark holders to enforce their rights and achieve the destruction of goods in every single case where counterfeit goods are seized by Customs.