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
This was big news this month. See some of our previous posts on this subject for some background, “Enlarging the ‘territorial’ nature of IP rights for goods in transit” and “Monsanto Technology, the European Court of Justice and Roundup Ready Soybean”
As IPKat sum the story up nicely in their post “Monsanto: court makes meal of soya“:
“In short Monsanto, the world’s biggest seed company, sought to rely on a European patent for its Roundup Ready soy beans as a means of preventing the importation into the European Union of soy meal from Argentina. The question at the heart of the dispute was whether the patent, for soy beans that are resistant to some herbicides (notably Roundup), extends to soy meal made from the patented seeds. Argentina, the world’s third-biggest soy bean exporter after Brazil and the US, is one of the few countries in which Monsanto had no patent coverage for its herbicide-resistant seeds.”
Business Week in their post “Monsanto Loses EU Bid to Halt Argentinean Soy Imports” say:
“[The] decision is binding across the 27 EU nations and can’t be appealed. “Monsanto cannot prohibit the marketing in the EU of soy meal containing, in a residual state, a DNA sequence,” it patented, the EU court said today.
While Monsanto had argued the patented trait in the soybeans remains under its protection after the beans have been processed into meal, the importers argued the patent’s scope isn’t that wide under EU biotechnology rules.”
Business Week also reported the drop is share price for Monsanto on the NYSE. IP Kat provided the following link for full details of the Case C-428/08 for those who wish to reference the decision. They also go on to point out:
“Within its sector, Monsanto’s actions will be carefully studied since not only that company but its competitors have looked to what is now held to be an improperly extended notion of patent protection for their income streams. The company is more IP-savvy than most and is bound to have Plan B, Plan C and Plan D lined up.”
This is interesting and fits into somewhat to our recent blog about increased trademark usage. We will also be looking out to see what Monsanto has up their sleeve then!
(Thanks to Kalpana Sastry & Victoria Henson-Apollonio for sending me links on this news item)