Mind where you source your imported Nokia products!

It's not often the IPKat doesn't spot an IP case before the European Court of Justice when it's still in the pipeline, but he does sometimes miss them when the Curia website classifies them under "Commercial Policy" rather an "Intellectual Property", "Approximation of Laws" or some other more obvious label. One such case is yesterday's ruling in Case C-93/08 Schenker SIA v Valsts ienemumu dienests, a reference for a preliminary ruling from the Augstākās tiesas Senāta Administratīvo lietu departaments (Latvia). Remarkably, this reference, from start to finish, took two weeks short of a calendar year -- is this the speediest IP-related reference ever, the Kat wonders.

Right: the IPKat turned the phone every way up, but still couldn't find the Nokia trade mark ...

So what was Schenker all about? It turned on the meaning of Article 11 of Council Regulation 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights (OJ 2003 L 196, p. 7):

"(1) Where customs authorities have detained or suspended the release of goods which are suspected of infringing an intellectual property right … the Member States may provide, in accordance with their national legislation, for a simplified procedure, to be used with the right-holder's agreement, which enables customs authorities to have such goods abandoned for destruction under customs control, without there being any need to determine whether an intellectual property right has been infringed under national law. To this end, Member States shall, in accordance with their national legislation, apply the following conditions:

– that the right-holder inform the customs authorities in writing within 10 working days … of receipt of the notification provided for in Article 9, that the goods concerned by the procedure infringe an intellectual property right referred to in Article 2(1) and provide those authorities with the written agreement of the declarant, the holder or the owner of the goods to abandon the goods for destruction. … This period may be extended by a further 10 working days where circumstances warrant it; 

– that destruction be carried out, unless otherwise specified in national legislation, at the expense and under the responsibility of the right-holder, and be systematically preceded by the taking of samples for keeping by the customs authorities in such conditions that they constitute evidence admissible in legal proceedings in the Member State in which they might be needed".

Article 18 of the same Regulation provides that

"Each Member State shall introduce penalties to apply in cases of violation of this Regulation. Such penalties must be effective, proportionate and dissuasive".

The reference arose after goods bearing the NOKIA trade mark were released by Schenker (a customs agent acting on behalf of their consignee) for free circulation. When the Latvian customs office later examined the goods, it thought they might be counterfeit and detained them under Regulation 1383/2003.  Samples were then sent to Nokia for testing purposes; Nokia confiurmed that they were indeed fakes and should be destroyed. 

At this point the customs office charged Schenker with IP infringement under Latvian law and also imposed a fine. The indignant Schenker, having unsuccessfully contested that decision before the State Tax Authority and, on appeal, before the Regional Court, appealed further to the Supreme Court which stayed the proceedings and asked the ECJ whether the simplified procedure mentioned in Article 11 imposed any restriction on the imposition of penalties under Article 18 for importing counterfeit goods.

The court ruled yesterday that the initiation, with the agreement of an intellectual property right‑holder and of the importer, of the simplified procedure under Article 11 did not deprive the competent national authorities of the power to impose a penalty under Article 18 (such as, in this case, an administrative fine) on any party responsible for importing goods into the Community customs territory.  According to the ECJ the whole point of introducing the simplified procedure was to make the Regulation easier to apply for customs administrations and intellectual property right-holders alike.  Since the simplied procedure was only optional, it could not of itself impose any restrctions on the operation of Article 18, which was mandatory.

The IPKat thinks that this analysis is clearly right. There is one aspect that troubles him, though. Schenker argued that, among other things,

"... in the main proceedings, the customs authorities relied solely on the unilateral statement of the trade mark proprietor to impose the disputed fine. Supported on this point by the Commission of the European Communities, Schenker calls into question whether that statement has sufficient probative value to permit a finding that ‘an intellectual property right has been infringed’ within the meaning of Regulation No 1383/2003".

This argument is not strictly relevant to the interpretation of the interplay of Articles 11 and 18, which is why presumably the ECJ doesn't feel the need to make specific reference to it.  However, given the difficulty that some IP owners have demonstrated in the past in spotting which imported goods were truly counterfeit and which were made under licence but not recognised by them on account of their own weak quality control, there seems to be an issue here that deserves to be properly considered.

Merpel notes that, in this reference, the Court dispensed with the services of the Advocate General. That, she says, must be what makes this ruling so short, clear and speedy.

Prison for trader in fake Nokia goods here
Nokia war on fakes here
How to recognise fake headsets here