On Tuesday,“ in “Breaking News — Nokia Customs Seizure Case for ECJ” (here), the IPKat breathlessly reported on the decision of the Court of Appeal for England and Wales to refer some questions — as yet probably unformulated and certainly unavailable to the public — to the Court of Justice of the European Communities on a preliminary ruling concerning the interpretation of EU customs seizure rules which appear not to permit the seizure of counterfeits in transit across the European Union if they’ve not been put on to the market there. This item mentioned a similar reference for a preliminary ruling from Belgium.
Many readers have since emailed the IPKat for further details of the Belgian reference which, he is pleased to say, he now has. The details are as follows: the decision is NV Koninklijke Philips Electronics v Far East Sourcing Limited AR No 02/7600/A, 4 November 2009, brought before the Court of First Instance, Antwerp District. The question asked in this reference actually relates to the Regulation 3295/94, the predecessor of Regulation 1383/2003:
Is Article 6.2(b) of Council Regulation 3295/94 of 22 December 1994 (the old Customs Regulation) a rule of standardised Community law that must be observed by the Court of the Member State that has been applied to by the holder of that right in accordance with Article 7 of the Regulation, and does that rule mean that the court, in making its assessment, may not take into account the temporary storage status /the transit status and must apply the legal fiction that the goods were manufactured in that same Member State, and must subsequently decide, while applying the law of that same Member State, whether such goods infringe the intellectual right in question?
Says the IPKat, given the nature of the questions and the closeness of time, it would be silly for the ECJ not to join the two cases, wouldn’t it? Merpel says, silliness has nothing to do with it: have you forgotten how the same court managed not to join all the Fixtures Marketing database right cases only a few short years ago?
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Tags: Copyright · Design rights · Trade marks
The IPKat has just received a message from Hayley Hill (Rouse) which is of great excitement to him. It reads as follows:
“On 9 November 2009 the Court of Appeal decided to refer questions to the ECJ following Nokia’s challenge to Customs’ policy of not targeting or detaining suspect counterfeit goods travelling in transit through the UK from one non-EU country to another non-EU country without evidence of likely diversion on to the EU market.
Pursuant to the policy, HMRC had decided not to continue to detain a consignment of fake NOKIA-branded handsets which were in transit in the UK from Hong Kong to Colombia. Nokia’s challenge was dismissed by Kitchin J in the Court below [see the IPKat's earlier comment here] although Kitchin J recognised that the result of his decision was not satisfactory.
While the Court of Appeal found Kitchin J’s judgment to be persuasive, it felt that the issue warranted a reference to the ECJ in light of another reference by the Belgian court on 4 November 2009 on a similar point in a copyright and designs case , and that a highly respected judge in the Dutch Court had come to a view effectively contrary to the position adopted in the UK by Kitchin J.
The precise form of the questions are to be agreed by the parties on Wednesday 18 November 2009. They will essentially address whether non-Community goods in transit from one non-Member State to another non-Member State are capable of constituting “counterfeit goods” within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence that they will be released into free circulation in the EU or be illicitly diverted onto the EU market.
The Court of Appeal also indicated that it will write to the President of the ECJ suggesting that its reference be conjoined with the Belgian reference.
Arty Rajendra of Rouse Legal who represented Nokia comments:
“Clearly the current position in which the national courts are adopting different interpretations of the same EU legislation is unsatisfactory. The ECJ reference presents an opportunity for all brand owners to obtain clarity on this area of law at the highest level.
It is hoped that the ECJ will give guidance which will result in robust border enforcement measures which both protect EU consumers and are effective against the international trade in fake goods.”
See also “That Nokia Case: Catching Hold of Counterfeits” here. At the time of posting, the Court of Appeal judgment has not yet been posted on BAILII.
Prediction: the IPKat thinks that, notwithstanding the excellence of Kitchin J’s reasoning and the integrity of his analysis, the Court of Justice of the European Union (as it will be, by the time it gives its ruling) will have no difficulty in finding a legal interpretation which will ensure that genuine fakes can be lawfully seized, while leaving it open for goods that infringe IP rights in neither the country of origin or the country of destination will continue to be immune from seizure even when passing through EEA territory in which they infringe. Merpel says, well done,
Managing Intellectual Property magazine, for getting the news out so quickly in its MIP Weekly bulletin.
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Tags: Copyright · Design rights · Trade marks
Many readers have since emailed the IPKat for further details of the Belgian reference which, he is pleased to say, he now has. The details are as follows: the decision is NV Koninklijke Philips Electronics v Far East Sourcing Limited AR No 02/7600/A, 4 November 2009, brought before the Court of First Instance, Antwerp District. The question asked in this reference actually relates to the Regulation 3295/94, the predecessor of Regulation 1383/2003:
