The ruling reflects a broader interpretation of the customs regulation than seen so far, and it may have far-reaching implications for Internet trade.
THE SUPREME COURT ASKS QUESTIONS
As previously mentioned in our Newsletter of 12 March 2013 the Supreme Court presented a number of prejudicial questions to the ECJ concerning the scope of the rules of the customs regulation enabling customs authorities to intervene against goods infringing trademark or intellectual property rights.
These questions were asked as part of the pending case where a Dane had bought a copy of a Rolex watch on the Internet. Subsequently, the watch was withheld by the Danish customs authorities.
However, as the watch was unquestionably bought for private purposes, the Dane had not infringed Rolex' trademark or intellectual property rights. The question was then whether the Chinese seller had infringed Rolex' rights in Denmark by way of sale via the Internet.
In that case, the customs authorities would be entitled to destroy the watch under the customs regulation.
According to the ECJ's previous practice concerning Internet sale, importance has been attached to the criterion that, in order for an infringement to exist in this area by virtue of the website, the website must address the consumers of the territory in question before.
In this connection, the ECJ has stated in a case between Ebay and L'oreal that the availability of a website within a territory is not sufficient in order for a website to address the consumers of that territory.
THE ECJ'S ANSWER TO THE SUPREME COURT
Taking the above into account, it is surprising that the ECJ now states in the Rolex case that the mere fact that the watch was purchased is sufficient to establish an infringement.
It is therefore not necessary that marketing or offers have been addressed to the Danish consumers in advance.
The ruling is far-reaching as it implies that the moment a product is purchased on the Internet - irrespective of where in the world the seller is located - European intellectual property rights may be infringed if the buyer is located within the EU.
This extension of the rights of the rights holder is also what is proposed by the European Commission in a new trademark directive aiming at providing an extended right to the rights holders to oppose import of infringing products.
The rights holders may, for example, now oppose import even if only the sender is acting commercially.