Interception of counterfeits by Customs Authorities: AG
Opinion in Philips v Lucheng Meijing and Nokia v
HMRC
The Advocate General ("AG") has given his opinion on
two questions referred by the Dutch and UK courts on the ability of
European customs authorities to intercept branded goods which are
suspected of being counterfeit, but which are ostensibly in transit
through Europe to a destination outside the EEA.
The AG confirmed that the "production fiction" could not
be applied when considering the "old" Counterfeit Goods
Regulation, and recommended that customs authorities may only seize
goods in transit where there are sufficient grounds for suspecting
that the goods are counterfeit and are to be put on the market in
the EC.
To view the article in full, please see below:
Full Article
In Koninklijke Philips Electronics NV v Lucheng Meijing
Industrial Company Ltd and others the Advocate General
considered the "old" Counterfeit Goods Regulation
(3295/94/EC) and, in particular, whether the so called
"production fiction" must be applied such that it is
assumed that the goods to be intercepted were manufactured in the
member state within which the goods are seized. This is a test
commonly used in the Netherlands to enable customs authorities to
seize allegedly counterfeit goods, even where they appear to be in
transit to a destination outside Europe.
The AG held that the production fiction could not be applied.
In Nokia Corporation v HMRC the ECJ was asked to consider
whether goods in transit in a member state from one non-Community
country to another were capable of being "counterfeit
goods" within the meaning of Article 2(1)(a) of the
"new" Regulation (1383/2003/EC), if there was no evidence
to suggest that those goods were to be put on the market in the
EC.
The AG found that there must be sufficient grounds for suspecting
that they are counterfeit and are to be put on the market in the
EC. Customs authorities must have the "beginnings of
proof", described as being some evidence that the goods might
infringe an intellectual property right. Unfortunately for rights
owners, the parameters of what amounts to sufficient grounds for
suspicion were not set out in the AG's opinion, and are yet to
be applied in practice. The AG did, however, set out some
circumstances that can lend substance to a well-founded suspicion
that goods were to be placed on the market of the EU, which
included excessive duration of transit; the difficulty in
identifying the consignor of the goods; and the kind and number of
means of transport used.
For the full text of the opinion, click here.
Case: Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd and others, Nokia Corporation v Her Majesty's Commissioners of Revenue and Customs, Joined cases C-446/09 and 495/09, 3 February 2011
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The original publication date for this article was 10/02/2011.