AG backs EU customs authorities over detaining goods
Customs authorities should be able to initiate and conduct proceedings laid down in article 13 (1) of EU regulation 1383/2003, a European Advocate General (AG) found on Tuesday.
Article 13(1) states that if within 10 working days of customs being notified about potentially IP-infringing goods legal proceedings have not been initiated, the goods have to be released.
AG Cruz Villalón was answering two questions referred from the Estonian Supreme Court (Riigikohus), in a dispute between Sintax Trading OÜ and the Estonian Tax and Customs Office (Maksu-ja Tolliamet, MTA).
The case dates to 2010, when a company called OÜ Acerra told the MTA that Sintax was trying to supply a product in Estonia in bottles that incorporated Acerra’s registered design for its “Pudel” bottle.
After examining a shipment of nearly 64,000 Sintax bottles, the MTA detained the goods on suspicion of infringing Acerra’s design. Acerra later assessed the goods, and agreed with the MTA’s findings.
In 2011, Sintax asked the MTA to release the goods, and separately sought to invalidate Acerra’s design at the Harju Maakohus (Harju District Court), though this action was later dismissed.
In response, the MTA told Sintax that under EU regulation 1383/2003 – which allows customs to inspect goods suspected of infringing IP – the agency could not release the goods, as it believed that they were infringing.
Sintax then brought an action before the Tallinna Halduskohus (Tallinn Administrative Court) to obtain the goods’ release. In June 2011, the court ordered the MTA to release the goods.
The MTA appealed to the Tallinna Ringkonnakohus (Tallinn Regional Court), but it dismissed the complaint in 2012. The MTA then appealed to the Riigikohus, Estonia’s highest court, which asked the Court of Justice of the European Union (CJEU) two questions and meanwhile stayed the proceedings.
The first question was whether the proceedings in article 13(1) of the 1383/2003 regulation can be conducted by the customs authorities themselves. Secondly, the court inquired whether those customs authorities, rather than a rights holder, may initiate such proceedings.
AG Villalón found that article 13(1) “has to be interpreted” in a way that does not exclude member states from “empowering customs authorities to conduct the proceedings mentioned in the provision”.
But, the AG added, that is on the condition that the “said power is provided for explicitly in national law, the customs authorities act in a manner that ensures their independence and impartiality, the right to be heard is respected and the opportunity for judicial review is granted”.
In addition, the regulation should not exclude member states from allowing customs authorities to “formally initiate the proceedings mentioned in the provision themselves”, the AG explained.
An AG opinion comes before a ruling from the CJEU, but the court does not have to follow the decision.
