On February 7th, 2014, the European Court of Justice (Case 98-13) issued a ruling pertaining the interpretation of Council Regulation (EC) no. 1383/2003 (“Customs Regulation”).
In the underlying case, a Danish citizen, Mr. Blomqvist, purchased on a Chinese online shop one counterfeit Rolex watch, allegedly for personal use. Following the seizure of the item by the Danish customs authority, Rolex sought Mr. Blomqvist’s consent to the destruction of the same. Mr. Blomqvist opposed such request and denied any infringement, on the claim that he bought the watch for personal use from a non-EU website that was not targeting the EU market,
Within the proceedings subsequently started by Rolex, the Danish Supreme Court decided to refer questions to the ECJ for preliminary ruling. In particular, the Danish Court sought to ascertain if the sole purchase of goods by EU residents via an extra-EU website not directly targeting EU consumers must be viewed as constituting a “use in the course of trade” under article 9 of Council Regulation no. 207/2009 and “distribution to the public” under article 4 of Directive 2001/29.
In its decision ECJ ruled that “goods coming from a non-member state (sold through non-EU online websites) 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 can be classified as “counterfeit good” 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 out 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.” ECJ also clarified that EU trademark and copyright laws do not require to verify whether the goods purchased from a EU consumer “were, in addition, prior to that sale, the subject of an offer for sale or advertising targeting European Union consumers.”
In light of the above, single sales of “counterfeit” or “pirated” goods to EU residents, even if completed through websites not targeting the EU market, constitute an infringement under the relevant regulation. This conclusion allows the right holders to continue to legitimately seek their destruction in accordance with the provisions of the Customs Regulation.