"Counterfeit Goods" - Just Passing Through
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Council Regulation 1383/2003 (the Regulation) permits customs authorities to take certain actions where goods entering the European Union (the EU) from non-member states are suspected of infringing intellectual property rights recognised in the EU. This includes suspending release of, or detaining the goods. Under the Regulation, such goods include, amongst others, counterfeit goods (goods infringing a trade mark right), pirated goods (goods infringing copyright or related right or design rights) and goods which infringe a patent under the law of the member state whose customs authorities are seeking to take action.
The Court of Justice of the European Union (the CJEU) has recently ruled that goods which are imitations of goods protected by a trade mark right, copies of goods protected by copyright or a design under EU or Member State law and which have originated from a non-member state cannot be classified as “counterfeit goods” or “pirated goods” under the Regulation merely on the basis that they have been temporarily imported into the EU while en route to another non-member state. Such goods will be classified as “counterfeit goods” or pirated goods” only where it is proven that they are intended to be put on sale in the EU.
This decision appears to be restricted to goods infringing trade marks, copyright, or design rights but it is unclear whether it will apply where goods infringe patent rights which, although included in the definition of “goods infringing an intellectual property right” under the Regulation, were not discussed by the CJEU which referred only to “counterfeit goods” and “pirated goods”.
Interestingly, the Irish Patents Act 1992 (the Patents Act) provides, at section 40(c), that patent holders have the right to prevent the importation of products the subject-matter of their patent. There is no guidance in the Patents Act as regards what constitutes importing, but the wording of the relevant section suggests that goods which would infringe a patent granted under the Patents Act, which are merely passing through Ireland could still constitute infringing goods, even where they are only temporarily passing through Ireland en route to another member state.
This decision was delivered by the CJEU in the joined cases of Philips Electronics v Lucheng Meijing and others (C-446/09) and Nokia Corporation v Her Majesty’s Revenue and Customs (C-495/09), the full text of which can be found here.
