Good news for rightsholders in the battle against the online sale of counterfeit goods. The ECJ recently ruled that customs authorities can seize and destroy counterfeit goods purchased for personal use by individuals in the EU from non-EU websites. This is possible even if the website is not targeted at the EU.
Under the Customs Regulation, customs may take action against goods entering the EU that are suspected of infringing certain intellectual property rights. Can they also seize a single parcel that is bought by a private person for personal use on a non-EU website? This was the key element of the question referred to the ECJ concerning a dispute between Blomqvist and Rolex. Blomqvist is a Danish citizen who ordered, as it turned out, a counterfeit Rolex watch for personal use from a Chinese website. When the watch arrived, Danish Customs seized the watch and suspended its release. In a dispute between the two parties about the suspension of the release and destruction of the watch, the Danish Supreme Court referred preliminary questions to the ECJ with regard to the applicability of the Customs Regulation to this situation. In this case, it was not the buyer who infringed intellectual property rights since the watch was bought for personal use.
The ECJ held that under the Customs Regulation it is possible to act against counterfeit goods, even if there is not any ‘distribution to the public’, within the meaning of the Copyright Directive, and any ‘use in the course of trade’, within the meaning of the Trade Marks Directive and the Community Trade Mark Regulation. When consumers buy these goods for personal use, in general there is no infringement of an intellectual property right. However, within the scope of the Customs Regulation, the ECJ ruled these goods can be classified as infringing. It is not necessary for the goods to have been the subject, prior to the sale, of an offer for sale or advertisement targeting consumers of an EU member state.
This ruling is good news for rightsholders as it strengthens their position. It gives them not only more opportunities to act against the online sale of counterfeit goods from non-EU websites under the Customs Regulation, but it also gives them more opportunities to act against the purchase by a consumer.