The Court of Justice of the European Union recently heard a reference from the Danish Courts in a case concerning whether a fake Rolex, purchased by an individual from a Chinese website and seized by
The Court of Justice of the European Union recently heard a reference from the Danish Courts in a case concerning whether a fake Rolex, purchased by an individual from a Chinese website and seized by Customs in the EU, should be destroyed. The full judgment can be found here: Martin Blomqvist v Rolex SA and Manufacture des Montre Rolex SA (Case C-98-13).
Mr Blomqvist purchased the offending non-Rolex from a Chinese online shop, and the watch was dispatched from Hong Kong by post. Because Mr Blomqvist ordered the item for personal use, it was accepted that he himself did not breach Danish laws on trade mark and copyright infringement. The question for the CJEU was, therefore, whether the seller – based outside the EU – had infringed trade mark and copyright laws in the EU. Establishing infringement within a Member State is a prerequisite to assuring the destruction of goods under the Customs Regulation.
The CJEU's reasoning went as follows:
This is a positive (if unsurprising) decision for rights owners and sends a strong message to purchasers of fakes online that EU Customs can and will seize and destroy counterfeit items coming into the EU, even those purchased for personal use.
This case was brought under the old Customs Regulation (1383/2003), although the decision will apply equally to seizures under the new Regulation (608/2013) as the new Regulation also requires an infringement to take place in the EU before goods can be destroyed. It remains to be seen whether the new rules relating to small consignments adopted in Regulation 608/2013 will further stem the tide of fakes ordered online – these rules allow Customs to destroy postal and courier items without the need for the rightsholder's involvement in certain circumstances.
For a reminder of the other changes in the new Customs Regulation, which came into force on 1 January 2014, see here.
Mr Blomqvist purchased the offending non-Rolex from a Chinese online shop, and the watch was dispatched from Hong Kong by post. Because Mr Blomqvist ordered the item for personal use, it was accepted that he himself did not breach Danish laws on trade mark and copyright infringement. The question for the CJEU was, therefore, whether the seller – based outside the EU – had infringed trade mark and copyright laws in the EU. Establishing infringement within a Member State is a prerequisite to assuring the destruction of goods under the Customs Regulation.
The CJEU's reasoning went as follows:
- The mere fact that a website is accessible from a Member State is not a sufficient basis for concluding that offers for sale displayed there are targeted at consumers in that Member State.
- However, rights in a Member State may be infringed where goods are the subject of a commercial act directed at consumers in that Member State, such as a sale, offer for sale or advertising, even when the goods are located in a non-Member State.
- The very fact that the fake item had been sold to a customer in the EU was proof that such an infringing act had occurred. It was unnecessary for the rights owner to prove that, in addition and prior to that sale, the goods had been the subject of an offer for sale targeting EU consumers.
This is a positive (if unsurprising) decision for rights owners and sends a strong message to purchasers of fakes online that EU Customs can and will seize and destroy counterfeit items coming into the EU, even those purchased for personal use.
This case was brought under the old Customs Regulation (1383/2003), although the decision will apply equally to seizures under the new Regulation (608/2013) as the new Regulation also requires an infringement to take place in the EU before goods can be destroyed. It remains to be seen whether the new rules relating to small consignments adopted in Regulation 608/2013 will further stem the tide of fakes ordered online – these rules allow Customs to destroy postal and courier items without the need for the rightsholder's involvement in certain circumstances.
For a reminder of the other changes in the new Customs Regulation, which came into force on 1 January 2014, see here.