1. “GOODS IN TRANSIT - THE EUROPEAN (EU) EXPERIENCE”
by Dr. Francesca Warrington
SALOMONE SANSONE

2. QUESTION ARISING:
Are “fake” goods captured in transit sent from a third country to another third country, susceptible to action in the EU country of transit?

3. Directive 89/104/EEC
First Trademarks Directive 89/104/EEC of 21 December was completely silent on the issue.

4. EU Regulations
EC REG 3295/94: no particular clues, but gave rise to theories [ex.: “manufacturing fiction” (subsequently discredited by the CJEU in Nokia)]
EC REG 1383/2003 Art 10: important clue:
The law in force in the Member State within the territory of which the goods are placed …………….shall apply when deciding whether an intellectual property right has been infringed under national law. …
EU REG 608/2013 Art. 1(6): same trend:
This Regulation shall not affect national or Union law on intellectual property.
It would therefore appear to have been a situation NOT HARMONISED AT EU LAW LEVEL, in which the position at law in different EU MS might differ rather radically.

5. TRIPS & GATT
Legislating on counterfeits in transit IS POSSIBLE (TRIPS, Art. 51, footnote 13), as long as:
freedom of legitimate transit trade is not compromised (GATT Art. V); and
such legislation is not:
a means of arbitrary or unjustifiable discrimination between countries where the same conditions prevail, or
a disguised restriction on international trade.
(GATT Art. XX(d))

6. EARLY WARNING SIGNS OF DANGER
CLASS (Class International BV v Colgate Palmolive Co) [Case C 405/03]
MONTEX (Montex Holding Ltd v Diesel SpA) [Case C 281/05]

7. Reality Check: NOKIA
[2009] EWHC 1903 (CH), with reference to UK law on the subject;
400 NOKIA phones in transit deemed “fake but not counterfeit”;
CJEU PRELIMINARY RULING [Case C-495/09, Nokia v. HMCRC], with reference to UK law on the subject:
goods coming from a non-member State which are imitations of goods protected in the European Union by a trade mark right …. cannot be classified as ‘counterfeit goods’ ………… within the meaning of [EU Reg. 1383/2003] merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure;

8. NOKIA.. CONTINUED
Mr Justice Kitchin (Chancery Division, England and Wales, 28 July 2009):
I recognise that this result is not satisfactory. I can only hope it provokes a review of the adequacy of the measures available to combat the international trade in fake goods by preventing their transhipment through Member States.

9. LONG AWAITED REFORM EU COMMISSION PROPOSAL (27 MARCH 2013)
EP PROPOSAL (25 FEBRUARY 2014)
EC COUNCIL POSITION (10 JUNE 2015), LEADING TO APPROVAL OF FINAL, COMPROMISE TEXT ON THE SUBJECT
FINAL APPROVAL OF NEW LAW (22-23 DECEMBER 2015)

10. December 2015: the european parliament approved the reform package
EU Reg. 2015/2424 (introducing Art. 9(4), effective ); and
EU Directive 2015/2436 (introducing Art. 10(4)), requiring MS implementation within ).

11. EUTMR: ARTICLE 9(4.)
Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark,
the proprietor of [an] EU trade mark shall .. be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging:
- come from third countries; and
- bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.
The entitlement …. shall lapse if, during the proceedings …….., evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

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