The recent set of changes to the laws governing trade marks in the EU is the most substantial since 1996. Hidden among them is a new weapon in the armoury of brand owners to help prevent counterfeit goods being transported across the EU. The new provision applies regardless of whether or not those goods are targeted at EU consumers.
Previously, the decision of the European Court of Justice in the joined cases of Philips and Nokia (C-446/09 and C-495/09) held that goods only infringed the trade mark owner’s rights in the EU if those goods were released onto the EU market, were intended for the EU market or the importer had “directed those goods at EU consumers” (e.g. by way of advertising to consumers that such goods would be shipped from outside the EU into the EU). The new Regulation, Council Regulation (EU) 2015/2424, which has been in force since 23 March 2016, overturns this decision and provides greater powers for customs officers to seize suspect goods.
Provided that brand owners have a European Trade Mark (“EUTM”) registration, all counterfeit products can now be seized whilst in transit through the EU unless the importer can prove that there will be no trade mark infringement in the final destination country of the goods in question and that those goods can be freely sold there.
It is imperative, therefore, for all brand owners who have problems with counterfeit products outside the EU to consider obtaining a EUTM and filing a Customs Notice in the EU (the latter will allow for the detention of suspect goods). This is important even if they do not currently have problems in the EU itself with counterfeit products or indeed even if they do not have any trade in the EU. If, as is common, counterfeit goods are being sent via customs hubs in the EU as part of their transit to another continent or a country outside the EU, these goods will now be capable of being seized.
Andrew Stone, a senior associate in the Intellectual Property Team said: “Brand owners should be aware that this new amendment further strengthens their ability to prevent counterfeiters from using the EU as a “stop-off” point for counterfeit goods. This is especially true when dealing with larger sellers from outside the EU who, to date, have been able to import counterfeit goods into the EU provided that those goods never left the port before travelling onto their final intended destination.”
Clarke Willmott has a dedicated anti-counterfeiting practice and we regularly assist clients in filing Customs Notices to ensure that counterfeit goods are seized upon entering the EU.