Customs enforcement in the Benelux: a proposed broadened protection
Europe’s main ports
Goods mainly enter through the airports of Amsterdam, Antwerp and Liege and through the seaports of Antwerp and Rotterdam. With 4.4 billion tonnes of goods transhipped in 2012, the seaport of Rotterdam is the number one seaport in Europe.
An increasing amount of counterfeit goods and goods obtained by piracy enter the European market through these ports and find their way to Europe’s consumers. According to European Commission studies, counterfeits not only limit innovation and growth, but also endanger health and consumer safety.
Customs enforcement
Due to the European Customs Enforcement Directive, the customs of all European member states are able to hold counterfeits or goods obtained by means of piracy at the border. This enables IP owners to take legal action and therefore forms an effective measure in the combat against counterfeits. Given its function as Europe’s main point of entrance for imported goods, customs enforcement is of particular importance at the seaport of Rotterdam.
The scope of the directive includes counterfeits, goods obtained by piracy and goods that infringe a patent, breeders’ rights or protected designations of origin. Customs can act ex officio or upon request. Customs notify the requesting party when a suspected shipment is intercepted, whereupon the rights owner can take action by checking whether the goods are indeed infringing and by acting against the party importing the goods.
“THIS PUTS A LARGE BURDEN OF PROOF ON THE RIGHTS OWNERS AND IS HARD TO SEE AS BENEFICIAL TO THE FIGHT AGAINST COUNTERFEITING.”
The main difficulty under the current regulation is that rights owners cannot act against goods that have an ‘in transit’ status. This means that the goods are being moved across the EEA but have an address outside Europe as their final destination, and so are dealt with as goods ‘not entering the EEA’. This means that a rights owner cannot act against these goods on the basis of its Community Trademark, even when it knows that the goods bear its trademark without permission.
On December 1, 2011 the Court of Justice of the European Union ruled in the Philips and Nokia cases (C-446/09 and C-495/09) that an IP owner can act against such a shipment only if there is evidence that the goods will end up on the European market. This puts a large burden of proof on the rights owners and is hard to see as beneficial to the fight against counterfeiting.
Proposals for more protection
It is good news that the proposals for the new Customs Enforcement Directive and the new Trademark Directive (dated March 27, 2013) foresee a broadened scope of protection and a solution for the transit situation. The scope of the Customs Enforcement Directive now also includes trade names, topographies and semiconductors, utility models and all other exclusive IP rights under European regulations. The scope also includes grey imports.
The Trademark Directive foresees that the trademark owner can prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the EU without being released for free circulation there, if the goods come from third countries and bear an identical, unauthorised trademark to that registered in respect of the goods, or which cannot be distinguished in its essential aspects from that trademark.
Although this latter proposal only regards identical trademarks for identical goods it can be seen as a positive step forward. We would gladly see this proposal come into effect.
