"On 9 November 2009 the Court of Appeal decided to refer questions to the ECJ following Nokia’s challenge to Customs’ policy of not targeting or detaining suspect counterfeit goods travelling in transit through the UK from one non-EU country to another non-EU country without evidence of likely diversion on to the EU market.
Pursuant to the policy, HMRC had decided not to continue to detain a consignment of fake NOKIA-branded handsets which were in transit in the UK from Hong Kong to Colombia. Nokia’s challenge was dismissed by Kitchin J in the Court below [see the IPKat's earlier comment here] although Kitchin J recognised that the result of his decision was not satisfactory.
While the Court of Appeal found Kitchin J’s judgment to be persuasive, it felt that the issue warranted a reference to the ECJ in light of another reference by the Belgian court on 4 November 2009 on a similar point in a copyright and designs case , and that a highly respected judge in the Dutch Court had come to a view effectively contrary to the position adopted in the UK by Kitchin J.
The precise form of the questions are to be agreed by the parties on Wednesday 18 November 2009. They will essentially address whether non-Community goods in transit from one non-Member State to another non-Member State are capable of constituting “counterfeit goods” within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence that they will be released into free circulation in the EU or be illicitly diverted onto the EU market.See also "That Nokia Case: Catching Hold of Counterfeits" here. At the time of posting, the Court of Appeal judgment has not yet been posted on BAILII.
The Court of Appeal also indicated that it will write to the President of the ECJ suggesting that its reference be conjoined with the Belgian reference.
Arty Rajendra of Rouse Legal who represented Nokia comments:
“Clearly the current position in which the national courts are adopting different interpretations of the same EU legislation is unsatisfactory. The ECJ reference presents an opportunity for all brand owners to obtain clarity on this area of law at the highest level.
It is hoped that the ECJ will give guidance which will result in robust border enforcement measures which both protect EU consumers and are effective against the international trade in fake goods.”