January 29, 2016
EU Trade Mark Reforms - Counterfeit goods
EU Trade Mark Reforms - Counterfeit goods
Trade mark law in Europe will undergo some significant reforms in the next few months.  A new EU Regulation (2015/2424) and EU Directive (2015/ 2436) were enacted in December 2015 (to enter into force from March 2016) which introduce some very important changes affecting Community Trade Marks (CTMs).  Some of the reforms specifically aim to assist in the battle against counterfeiting:   Counterfeit goods in transit Both Directive (EU) 2015/2436 and Regulation (EU) 2015/2424 make new provisions granting EUTM owners an express right to prevent infringing goods in transit from entering, or being stored in, the EU. By virtue of two cases decided in 2009, Philips (C-446/09) and Nokia (C-495/09), it had previously been ruled that goods could only infringe in the EU if they were released into free circulation in the EU, or they were intended for sale in the EU market, or they were the subject of a commercial act directed to EU consumers.  In other words, EU trade mark rights are currently not infringed by goods that are merely passing through through the EU (even if they are counterfeit goods). This has meant that such goods cannot be seized by customs authorities as they make their way through the EU on to other jurisdictions. Under the new law, EUTM owners will be afforded much stronger protection against counterfeiting as such goods in transit will now infringe EU trade mark rights if the goods bear, without authorisation, a mark that “cannot be distinguished in its essential aspects” from the registered EUTM. There will only be a defence to prevent such action if the party responsible for the goods can demonstrate (with evidence) that the goods are intended for sale outside the EU, and that the EUTM owner is not entitled to prevent sale of the goods in the intended country of sale. This raises the possibility that brand owners may have more freedom to forum shop (to choose potentially more favourable jurisdictions from a legal system point of view) in relation to certain types of counterfeit activity. Use of the mark on packaging New provisions relating to preparatory acts and packaging will also assist in the fight against counterfeiting.  EUTM owners will now also be given the right to prohibit the use of the same or similar trade marks on “packaging, labels, tags, security authenticity features or devices or any other means on which the mark may be fixed” where there is a risk that such packaging etc. will be used to infringe the EUTM owner’s rights.  At present clever counterfeiters often separate the product from the labelling with a view to avoid formal legal action, and these changes will assist in such circumstances. Both of these changes make it all the more important to make sure that your customs watches are up to date.
Tags
Fashion /  Trademarks /  Anti-Counterfeiting

Found this article interesting today?
Send us your thoughts: