Imported single counterfeits subject to border seizure measures (05/2014)

The legal situation
At the trademark owner’s request, custom authorities in the member states of the EU are entitled to seize counterfeit goods being imported in the territory of the EU. Those goods can then be destroyed in a simplified procedure, if the declarant, holder or owner of the goods does not oppose this destruction within a period of 10 working days. A definition for “counterfeit goods” is provided by Art. 2 (1) (a) (i) of Council Regulation (EC) No 1383/2003:

“goods, including packaging, bearing without authorisation a trademark identical to the trademark validly registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes
the trademark-holder’s rights under Community law, as provided for by Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trademark(5) or the law of the Member State in which the application for action by the customs authorities is made”

Since, under German and European law, finding of trademark infringement requires use of the contested sign “in the course of trade”, thereby excluding private use. Before this backdrop, it was an open question whether or not custom authorities are entitled to seize and subsequently destroy single product imitations imported by private persons.

Judgment of the Court of Justice of the European Union (CJEU)
In a judgment of 06.02.2014 (C-98/13, Martin Blomqvist vs. Rolex SA et. al.), the CJEU generally answered this question in the affirmative. With a view to one imitated Rolex watch imported by a Danish individual, the court found that the seller residing in Hong Kong infringed Rolex S.A.’s (Community) trademark rights by deliberately selling and sending the imitation to an addressee in the territory of the EU. With other words, the CJEU confirmed that border seizure measures can lawfully apply even if the transaction forming the basis for the product’s import constitutes a trademark infringement only by the seller and not by the buyer residing within the territory of the EU.

Practical Consequences
The CJEU’s clear statement brings about legal certainty in a formerly highly disputed grey area. At least from a legal point of view, there is no obstacle in having custom authorities in the EU member states seize and destroy single counterfeits imported by privately acting individuals under applicable European law.