On suspicion


Aurélia Marie

In France, intellectual property rights’ holders have been using and working with customs authorities for many years—and well before European harmonisation—to stop the importation of counterfeit goods.

Following the European Court of Justice’s rulings in the Class International and Montex Holdings cases, it is now accepted that the external transit procedure of non-Community counterfeit goods does not infringe an intellectual or industrial property right valid within the EU if the counterfeit goods are not destined for a European Union market.

This is controlled in-depth by French customs. The rights holder has the burden of proving that the goods at issue will be put on the market. Proof cannot consist of a mere presumption of parallel trade activities, nor of offers and sales among successive traders when these are not followed by the goods being put on the market in a European member state. This may however change in the near future.

Advocate General Cruz Villalon recently gave an opinion on a case that saw Nokia contest refusal by the UK customs authority (HM Revenue & Customs) to proceed with the seizure of goods that it had inspected and that Nokia had identified as infringing its trademarks.

IP rights, customs