I recently wrote about a pending court case regarding an imported counterfeit Rolex watch. The importer, a private person, was well aware that the watch was counterfeit and the import was for private use. Customs ceased the watch and the Maritime- and Commercial Court (High Court) took the novel stand that the watch was barred from release as it would have infringed the rights of Rolex, had it been manufactured in Denmark.
In Danish IP legislation an infringement only exists in the commercial sphere. It is permissible for private people to own counterfeits and even personally import these. Whether a private person may import for personal use via shipment is still not quite settled in law. Therefore, the court’s expanded interpretation of the Customs Regulation is indeed noteworthy. Is the court really taking us to a new and exciting level?
Happily for legal practitioners the decision was appealed to the Supreme Court. Danish courts are traditionally (too?) reluctant in asking the European Court of Justice (ECJ) preliminary questions on the interpretation of EU-legislation. In this matter the Supreme Court has recently decided to ask the ECJ. We can therefore expect an answer from the ECJ at the end of 2013.
If the ECJ confirms the Maritime- and Commercial Court’s interpretation this will mean a significant strengthening of brand owners’ rights and a parting from long-established legal interpretation on this field. It may even mean a need to revise Danish national legislation.
I will also take the opportunity to crudely bang my own drum and refer to my blog post about fake goods in transit. Although not identical this was about related questions. In the two ECJ cases referred (Philips and Nokia) the ECJ answered questions on whether or not fake goods in transit could be ceased and destroyed. A part of these cases was the lack of detailed labeling or uncertainty as to the final destination of the goods. In this Danish matter regarding Rolex there is no question about the final destination of the fake watch. Therefore, we must expect the ECJ to rule on the question on whether or not commercially produced fake goods can be ceased and destroyed when (legally?) imported for strict private use.
Thorbjørn Swanstrøm, Attorney at Law
