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Thursday, 6 February 2014

Rolex v Blomqvist: enough to give you a seizure

The IPKat is not easily deterred from his purrpose, but he is sometimes deflected from it. More than half way through the afternoon, the Curia diary for today still shows the following information:

Judgment
C-98/13
Intellectual property
Blomqvist
Court of Justice - Second Chamber
DACourtroom I - Level 8
The text is not available in English
Advocate General : Cruz Villalón
Erroneously supposing that the words "The text is not available in English" meant something like "The text is not available in English", he sighed a deep and meaningful sigh and turned to address his other pressing tasks for the day.  Not until he was startled into action by the sudden arrival of John Enser's post on the 1709 Blog, here, did it occur to him that the text might be available online in something other than Danish.  So, with apologies to any readers who may have been awaiting it with bated [please note correct spelling] breath, here's the story.

The judgment referred to above is that of the Second Chamber of the Court of Justice the European Union (CJEU) in Case C‑98/13Martin Blomqvist v Rolex SA, Manufacture des Montres Rolex SA, a request for a preliminary ruling from the Højesteret (Supreme Court), Denmark [a big Katpat to the CJEU, in dispensing with an Opinion from the Advocate General, for getting a ruling out in less than a year].

The facts may be familiar to some readers of this blog and of MARQUES's Class 46but here they are again. In January 2010 Mr Blomqvist, a resident of Denmark, ordered a watch described as a Rolex from a Chinese online shop. The order was placed and paid for through the seller's English website and the watch was posted to him from Hong Kong. On its arrival in Denmark, the parcel was inspected by the customs authorities: they suspended customs clearance, suspecting that it was counterfeit and that it infringed copyright, and told both Rolex and Blomqvist accordingly.

In keeping with the procedure laid down by Customs Regulation 1383/2003, Rolex sought the continued suspension of customs clearance, established that the watch was in fact counterfeit and then asked Blomqvist to consent to its destruction.  "No" said Blomqvist, "I bought it legally!" Rolex then took him to court (the Maritime and Commercial Court), seeking to force Blomqvist to agree to the suspension of release and to the destruction of the watch without compensation. That court granted Rolex’s claim.

Blomqvist appealed to the Højesteret, which wondered whether,on the facts, any IP right had been infringed in Denmark. It having been established that Blomqvist bought the watch for personal use, something that infringed neither Danish copyright nor trade mark law, and there being no apparent "distribution to the public" or "use in the course of trade", the court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘1. Is Article 4(1) of Directive 2001/29 ... [the InfoSoc Directive] to be interpreted in such a way that it must be viewed as constituting “distribution to the public” in a Member State of copyright-protected goods if an undertaking enters into an agreement via a website in a third country for the sale and dispatch of the goods to a private purchaser with an address known to the vendor in the Member State where the goods are protected by copyright, receives payment for the goods and effects dispatch to the purchaser at the agreed address, or is it also a condition in that situation that the goods must have been the subject, prior to the sale, of an offer for sale or an advertisement targeted at, or shown on a website intended for, consumers in the Member State where the goods are delivered?

2. Is Article 5(1) and (3) of Directive 2008/95 ... to approximate the laws of the Member States relating to trade marks to be interpreted in such a way that it must be viewed as constituting “[use] in the course of trade” of a trade mark in a Member State if an undertaking enters into an agreement via a website in a third country for the sale and dispatch of goods bearing the trade mark to a private purchaser with an address known to the vendor in the Member State where the trade mark is registered, receives payment for the goods and effects dispatch to the purchaser at the agreed address, or is it also a condition in that situation that the goods must have been the subject, prior to the sale, of an offer for sale or an advertisement targeted at, or shown on a website intended for, consumers in the State in question?

3. Is Article 9(1) and (2) of Council Regulation 207/2009 ... on the Community trade mark to be interpreted in such a way that it must be viewed as constituting “[use] in the course of trade” of a trade mark in a Member State if an undertaking enters into an agreement via a website in a third country for the sale and dispatch of goods bearing the Community trade mark to a private purchaser with an address known to the vendor in a Member State, receives payment for the goods and effects dispatch to the purchaser at the agreed address, or is it also a condition in that situation that the goods must have been the subject, prior to the sale, of an offer for sale or an advertisement targeted at, or shown on a website intended for, consumers in the State in question?

4. Is Article 2(1)(b) of Council Regulation 1383/2003 ... found to have infringed such rights to be interpreted in such a way that it is a condition for the application in a Member State of the provisions on the prevention of release for free circulation and the destruction of “pirated goods” that “distribution to the public” must have occurred in the Member State under the same criteria as indicated in the answer to question 1?

5. Is Article 2(1)(a) of Council Regulation 1383/2003 ... goods found to have infringed such rights to be interpreted in such a way that it is a condition for the application in a Member State of the provisions on the prevention of release for free circulation and the destruction of “counterfeit goods” that “[use] in the course of trade” must have occurred in the Member State under the same criteria as indicated in the answers to questions 2 and 3?’
Following a short and sweet [for Rolex and, by implication, IP rights owners of all shapes and sizes] analysis consisting of just 13 paragraphs, the CJEU ruled as follows:
Council Regulation ... 1383/2003 ...  must be interpreted as meaning that the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.
This Kat's email inbox is already filling up with happy notices from rights owners and firms representing them, and he's not surprised.

1 comment:

Anonymous said...

Quick question: what aspect of a watch could be entitled to copyright protection?

They only way I can fit a watch into the copyright law is, maybe, as a sculpture. But is it even that? Perhaps there's a copyright on the purely non-functional design elements, but could those be separated from the functionality?

The judgment says: "It is not disputed that, in the case in the main proceedings, Rolex is the holder in Denmark of the copyright and trade mark right which it claims and that the watch at issue in that case constitutes counterfeit goods and pirated goods within the meaning of Article 2(1)(a) and (b) of the customs regulation."

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