Fighting counterfeits: goods in transit in the EU


Chris McLeod

Fighting counterfeits: goods in transit in the EU

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Reforms to the EU trademark system include amendments to the provisions on detaining goods in transit. While these changes seem positive at first sight, they may be open to interpretation. Chris McLeod, president of the Institute of Trade Mark Attorneys, reports.

There has been considerable comment in the intellectual property press about the reform of the Community trademark (CTM) system and the imminent changes at the Office for Harmonization in the Internal Market. These include the office’s change of name to the European Union Intellectual Property Office, reductions in fees, removal of the requirement for graphical representation of a mark and the introduction of certification trademarks.

There has been rather less focus on what are potentially very positive changes to the provisions on goods in transit. Readers will probably be familiar with the Nokia case (cases C446/09 and C495/09) and the December 2011 judgment of the Court of Justice of the European Union (CJEU). This judgment held, in essence, that it was not permissible to seize potentially infringing goods in transit which were destined for sale outside the EU unless there was a clear intention to divert the goods to consumers in the EU.

Regulation (EU) No. 2015/2424, which amends Regulation (EC) No. 207/2009 on the CTM, contains a new clause, article 9(4), relating specifically to goods in transit. The relevant part reads as follows:

Chris McLeod, Institute of Trade Mark Attorneys, counterfeit, CTM, transit, IP, trademark, infringement, CJEU, Elkington and Fife,