SIC TRANSIT GLORIA

Last week the ECJ determining whether the obligations placed on Member States under Regulation 3295/94 apply when potentially counterfeit goods which are travelling between 2 non-EU countries are in transit in an EU country. It also considered whether national law should be read in accordance with EU law where criminal penalties are at stake.

The rights of various trade mark owners were infringed by X, who transported counterfeit goods between various countries. The goods were only ever in transit in Austria and were never actually imported to or exported from Austria. Nonetheless, the mark owners requested the Austrian authorities open a judicial investigation against X. For such an investigation to be opened, a criminal offence must have taken place, but under the relevant Austrian act (the MSchG), only the import and export of counterfeit goods constitutes a criminal offence, and not their transit through Austria. The ECJ had previously held that transit of counterfeit goods was caught under Regulation 3295/94, but that case was a civil case and this case was a criminal case. Therefore, the Austrian Landesgericht Eisenstadt referred a question to the ECJ to determine whether the law, in failing to render the transit of counterfeit goods a criminal offence, was contrary to Regulation 3295/94.

The referred questions were answered as follows:
♦ As the ECJ has previously decided, Regulation 3295/94 applies where goods are in transit between two non-EU countries but are temporarily detained in an EU Member State by the customs authority of that state at the request of the company which holds the rights claimed to have been infringed. Article 11 requires Member States to introduce penalties for infringements of the prohibition laid down in Article 2 on the release for free circulation, export, re-export and placing under suspensive procedure of the counterfeit goods. The obligation under this Article applies to all types of national proceedings and does not depend on whether the national proceeding are civil, criminal or administrative.
♦ It was for the national court and not the ECJ to determine whether the Austrian MSchG applied to the mere transit of goods. However, if the national court found that it did not apply, then it would be proper for the ECJ to conclude that the Regulation precluded the national law in question. Nonetheless, national courts are required to interpret their national law in accordance with EU law in as much as it is possible. However, special considerations apply where the principle of compatible interpretation is applied to national criminal matters. Particular attention must be paid in such circumstances to legal certainty and non-retroactivity. Previous cases have held that a directive cannot be used to widen criminal liability under national law. Although the provision here was a directly effective regulation, the reasoning concerning directives applied here because it was for Member States to transpose penalties for infringement into national law. Therefore, if the national court found that the national law did not prohibit the transit of counterfeit goods across Austrian territory, criminal penalties could not be imposed for such conduct, even if the national rule was contrary to EU law.

The IPKat welcomes the sensible approach taken to legal certainty where criminal proceedings are involved taken by the ECJ in this case. He’s glad to see that some values are considered even more important than the protection of intellectual property rights.

The new Counterfeiting Regulation (replacing 3295/94) here
Fun lovin’criminals here
Silly criminals here
Criminally funny here