England & Wales Court of Appeal asks ECJ to rule on seizure of “counterfeit goods ” in transit through EU

The England & Wales Court of Appeal has brought to the European Court of Justice a question referring to the Case C-495/09, where Nokia Corporation pleads its right for the seizure of counterfeit goods coming from a non-Member State to another non-Member State.

The reference for a preliminary ruling brought up by England & Wales Court of Appeal to the European Court of Justice (ECJ) made on December 2nd 2009 and published in the OJEU on February 13th 2010, refers to Nokia's Case on the seizure of counterfeiting goods which are passing through the European Union, only for transit purposes.

The case is based on Her Majesty's Revenue and Customs, HMRC (UK) seizure in Heathrow airport of about 400 counterfeit Nokia goods, confirmed by the company to be fakes, which were in transit from Hong Kong to Colombia. Following the seizure, Nokia Corporation, as holder of a Community trade mark, asked HMRC to act against the companies behind the facts.

As the goods were not declared for release for free circulation, being only in transit through the EU,  the question arose about the possibility for EU customs authorities to seize non-Community goods which are merely in transit through EU territory.

The Court of Appeal has therefore brought the following question to the ECJ, “are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and 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/EC if there is no evidence to suggest that those goods will be put to the market in the EC, either in conformity with a customs procedure or by means of an illicit diversion?”.

The Court will therefore have to pronounce on the application of Council Regulation (EC) Nº 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights, an issue which is closely related to customs initiatives to combat counterfeiting and piracy, one of the key elements on EC industrial property rights strategy for Europe, a phenomenon which has turned out to be an increasing one within EU Customs, representing over 43,000 cases of fake goods seized at the EU's external border in 2007.