Thelaw was very stringent on the fact that the infringing article had to bereleased into the territory of the Union to be an infringing trademark.
Furthermore, the mere transit of goods containing the trademark, or a similarmark did not amount to a trademark infringement. Therefore, goods whichinfringed the mark could not be seized unless they were released for freecirculation in the EU without proprietor’s authorisation. The currentpractical approach has been illustrated in the case of Nokia Corporation v Her Majesty’s Commissioners of Revenue andCustoms, C-495/09 (“Nokia”)1. In this case thedispute was over whether the phones were counterfeit goods for the purposes ofArticle 1(1)(a)(i) of the regulation2.
Theissue arose from the fact that the phones were destined to be released into theColombian market. Nokia alleged that these were counterfeit goods and thereforethey tried to invoke that this amounted to trademark infringement. HMRC refusedto detain the phones on the grounds that there was no evidence to suggest thegoods would be released into the European market. The legal issue in this casewas whether it was lawful for the UK custom authorities to reject Nokia’sapplication of detention of certain goods in transit under a suspensiveprocedure.
The Court of Appeal held that goods that bear a trademark, which arein transit from a non-member state and its destination is a non-member statemaybe be seized by customs provided there is sufficient evidence to suspectthat they are counterfeit goods and they are intended to be released into the EUterritory. This meant that trademark proprietors would have no remedy inprotecting their trademark when it was a blatant infringement of their rightsin respect of goods in transit. If, however there wasevidence to suggest that there are operators involved in the manufacture,consignment or distribution of the goods, which were directed at EU consumers,custom authorities could take steps against goods in transit. (too long of a sentence). Suchsuspicions may arise, when the consignor cannot be identified or where theshipper is concealing commercial intentions.
In these circumstances the burdenof proof would need to be satisfied and only then protection would be given totrademark proprietors.1 2REGULATION (EU) No 608/2013 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL