Brussels, 04/02/2011 (Agence Europe) - Member states' courts cannot ignore the temporary import or transit status of counterfeit goods seized by customs authorities and cannot, therefore, have recourse to the “production fiction”, whereby they are considered to have been produced in the member state in order to allow the national court, on the basis of national law, to rule on whether the goods infringe intellectual property law. However, customs authorities may seize “external transit” goods “provided that there are sufficient grounds for suspecting that they are counterfeit goods and, in particular, that they are to be put on the market in the European Union, either in conformity with a customs procedure or by means of an illicit diversion”.
This is the opinion proposed to the Court by Advocate General Pedro Cruz Villalón in joined Cases C-446/09 and C-465/09. In both cases, interpretation was sought of EU law to clarify the action that customs officers should take when confronted with possible infringements of intellectual property law with “external transit” counterfeit goods. Under the terms of this status, itself based on a “legal fiction”, goods passing through the EU from a non-EU country destined for another non-EU country are treated as if they had never entered the EU.
In the first Case (C-446/09), a shipment of apparently counterfeit electric shavers from China and heading for an unknown destination was seized in Antwerp. The Belgian judge wanted to know if European law allowed recourse by the national court to “production fiction” (see above) so that a national court could rule on any infringement of intellectual property rights. The advocate general considers that, in this case, application of this criterion “clearly (goes) beyond the objectives of the European Union's customs legislation”, which protects both transit traffic and intellectual property rights.
In the second case (C-495/09), UK Customs refused to seize a consignment in transit of mobile telephones, bearing the EC mark, on the grounds that the phones could not be treated as counterfeit goods under the terms of the relevant Community regulation. With no proof that these goods could have been diverted to the UK or EU markets, any such seizure would have been illegal, UK Customs argued. In this case, the advocate general partly upholds this interpretation. “External transit”, he says, “is not completely devoid of effect on the internal market” and that it is a question of determining whether that danger is so great “as to make it possible to classify certain goods as 'suspected' of infringing an intellectual property right”. He concludes that non-Community goods bearing a Community trade mark which are subject to customs supervision in a member state and in transit from one non-member country to another non-member country may be seized by those customs authorities provided that there are sufficient grounds for suspecting that they are counterfeit goods. (F.G./transl.rt)