Can the proprietor of a patent prohibit the mere transit of goods placed under the external transit procedure, coming from and going to countries where the patent is not so protected? Such was the question in a recent case before the Hamburg District Court.


The litigation concerned a dispute between an English limited company holding a European patent for electrical compounds for wireless electrical devices and a German enterprise specialised in transporting goods from the port of Hamburg to the port of Lübeck and shipping them to the Baltic Sea area, in particular to Russia. As the English limited claimed for patent infringement, the Hauptzollamt Kiel at first held back a delivery of electric kettles coming from China although the delivery was transported in uninterrupted transit from the Freeport of Hamburg to the port of Lübeck, from where it was to be shipped to Russia. During the transit, it was sealed by the customs seal. Neither in China nor in Russia did the claimant hold patent protection. This gave rise to the question whether the mere transit of goods could infringe patent rights.

The problem is well-known from the context of trade mark law. In "Montex Holdings/Diesel" (C-281/05), the European Court of Justice decided that the proprietor of a trade mark can prohibit the transit of goods bearing the trade mark and placed under the external transit procedure through a Member State in which that mark is protected with the destination of another Member State where the mark is not so protected, only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that Member State of transit.


The patent proprietor’s claims for patent infringement were rejected. The Hamburg District Court transferred the European Court of Justice’s trade mark reasoning to the context of patent rights. The decision was based on the argument that it would be contradictory to make a difference between trade mark law and patent law in the question whether or not specific goods were put on the market of a Member State. As the electric kettles were placed under the external transit procedure and sealed by the customs seal, the Hamburg District Court saw no indications that the defendant intended to place them into the free movement of goods on the German market.


The decision sets clear boundaries to claims for patent infringements in the context of transit. It convincingly harmonizes trade mark law and patent law in respect of the difficult question of whether or not the proprietor of an intellectual property right can prohibit the mere transit of goods, coming from and going to third countries out of the reach of protection. It will be interesting to see whether the claimant will appeal against this judgement and thus pave the way to a fundamental decision by a higher instance court.