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Nokia/Philips rulings on fakes in transit: write-up of submissions

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Do you ever wonder what the summary of written submissions made to the Court of Justice of the European Union actually looks like? If you've never seen any before, this is your golden opportunity. The hearing took place last Thursday in Case C-495/09 Nokia, in which the world's largest maker of mobile phones argued that the interpretation of EU customs rules by the British courts could make the region a safe harbour for counterfeiters.

According to a ruling by the trial court, customs officials may not seize fake products that are in transit through the 27-nation EU if there is no evidence that those products will actually be placed on the market within that zone. This, says Nokia, would make the EU "a logistical hub for counterfeiters".  The dispute stems from a dispute in the UK where customs authorities stopped a shipment of about 400 fake Nokia mobile- phone handsets and accessories at Heathrow airport. The goods were in transit from Hong Kong to Colombia. After Nokia said the products were fakes, the UK officials said they could not detain them because of a lack of evidence that they would be diverted back into the EU. The Court of Appeal however decided to refer the matter to the CJEU for a preliminary ruling,

The court's summary of the written submissions can be read here. Oral submissions were made on behalf of Nokia, the International Trademark Association, the European Commission and the British, Czech, French, Polish and Finnish governments. Written submissions were lodged by the Italians and Portuguese who, presumably having checked the weather forecast for Luxembourg prudently chose not to attend the hearing.

The IPKat learns that M. Tizzano, the Italian President of the Court, kept a very tight rein on proceedings, restricting the oral submissions strictly to the 20-minute time limit and preventing any repetition [for this alone he deserves a great reward].  To remind readers, the question referred was:

?Are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and which are in transit from a non-Member State to another non-Member State capable of constituting ?counterfeit goods? within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence to suggest that those goods will be put on the mark in the EU, either in conformity with a customs procedure or by means of an illicit diversion.?

Very broadly, in oral submission Nokia?s position that the question should be answered positively was supported by INTA, France, Finland and Poland (and Portugal and Italy in written submissions). The UK, the Commission and the Czech Republic took the position that the answer is ?no?. The Advocate General's Opinions in Nokia and (separately) in Philips -- a similar case which was heard earlier the same day, will be delivered on 3 February 2011 -- the beginning of the Chinese Year of the Rabbit -- so we don't have too long to wait.

Link to an interview with Lucy Nichols of Nokia, on BBC Radio 4?s ?You and Yours? programme (click here and go to Chapter 2).

Put it in writing here
Never put it in writing here

The IPKat thanks Ruth Orchard (Director General, Anti Counterfeiting Group) and his old friend Jeremy Newman (Rouse) for their assistance.

Full post as published by IPKat on November 22, 2010 (boomark / email).