Daily Archives: November 26, 2010

Seize or not to seize? This is the problem

In a recent hearing between the European Court of Justice and Nokia (Case C-495/09), Nokia argued that the interpretation of British Courts of EU custom rules could turn the EU into a safe harbour for counterfeits. The dispute started when UK officials declared that goods in transit from a non-EU country to a non-EU country and not (at least apparently) destined for the EU, could not be seized, even if declared to be fakes (by Nokia in this case).

The question posed to the ECJ was:

are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and which are in transit from a non-Member State to another non-Member State capable of constituting ‘counterfeit goods’ within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence to suggest that those goods will be put on the mark in the EU, either in conformity with a customs procedure or by means of an illicit diversion?’

The UK, Czech Republic and the EU Commission answered “no”. France, Finland, and Poland answered “yes”. The Advocate General will answer on 3 February 2011 – so we have to wait a bit longer…

However, the question poses interesting points. Our readers may remember the heated debate when Dutch authorities seized generic medicines from India to Brazil and stopped in transit in Holland (17 June 2009). Are medicines different from mobile phones? And can we even compare generic medicines to counterfeits?

If the Advocate General answers “no” to the above question, and likewise all the other courts Nokia will appeal to, will this make the EU more flexible towards certain other goods until now widely debated? I don’t know you, but I look forward to 3 February (which is also a very boring period of the year, no Christmas, no holiday on the horizon) to keep me excited.

Thanks to our favourite Kat (IPKat) for drawing our attention to this interesting case.  “Nokia/Philips rulings on fakes in transit: write-up of submissions

 post written by Francesca Re Manning,  solicitor and consultant to CAS-IP