Good news for well-known trademarks owners in order to support them in the fight against counterfeits.
Can EU customs seize counterfeits upon their arrival to the European Union when they were purchased on the Internet in a third country without prior offer or advertisements targeting EU citizens? Simply put yes. This is the answer of the Court of Justice in its judgment of 6 February 2014, case c-98/13 Rolex / Mr. Blomqvist.
The main proceeding started in Denmark, from where a Danish citizen bought a watch incorporating the trademark ROLEX. The purchase was made through a website located in China. Once the watch arrived at the Danish customs was seized. ROLEX confirmed that it was a counterfeit and request the destruction to the Danish citizen. He rejected the request, arguing that "the purchase was lawful." ROLEX started legal actions before the Danish courts. The lawsuit of ROLEX was granted by the first instance court. The judgment was appealed by the Danish citizen and the Court of Appeal requested for a preliminary ruling.
The Court of Justice categorically says that the right holder is entitled to enforce its IP rights as soon as the counterfeit has arrived to the territory of the European Union although the goods had not been subject of a prior offer for sale or advertising targeting consumers of that State.
Bearing in mind the above, the Court says that “the mere fact that the sale was made from an online sales website in a non-member country cannot have the effect of depriving the holder of an intellectual property right over the goods which were the subject of the sale of the protection afforded by the customs regulation, without it being necessary to verify whether such goods were, in addition, prior to that sale, the subject of an offer for sale or advertising targeting European Union consumers”.
Indeed, as long as it is proved or it could be presumed that the final destination of the counterfeits is EU territory, the seizure by customs would be justified (Joined Cases C-446/09 and 495/09 Philips and Nokia). Thus, the sale of a counterfeit made from a third country to a EU citizen should be considered, on this purpose, as “goods to be put on sale in the European Union”. No prior offer or advertisement is necessary. Consequently, this kind of goods can be seized and destroyed.