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Intellectual Property Law

: IPKat

British customs attract international attention

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

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Members of the International Trademark Association (INTA) receive, as part of their membership, a subscription to The Trademark Reporter. This Kat -- a long-standing member of the INTA himself -- is among those who, possibly unfairly, suspect that not too many non-US members of this excellent publication actually read it, since both in content and style it has a very American feel to it.

Right: Among the British guardsmen is a fake imported guard who gave Customs the slip at Heathrow. Will Her Majesty pick him out during her inspection?

In the very recent past, INTA members should have received their May/June edition of the Reporter, which contains INTA?s submission to the Court of Justice of the European Union in Case C-495/09 Nokia v Her Majesty's Revenue and Customs (HMRC) (noted here by the IPKat). This is a controversial reference for a preliminary ruling of questions pertinent to the issue of whether Customs in the EU can detain goods which are known to be counterfeit but which, being in transit from one non-EU country to another, are not put on to the market in the European Economic Area.

INTA's involvement is not without significance, for at least the following reasons:

* this appears to be the first time that the INTA has achieved direct party status in Court of Justice proceedings;

* party submissions to the Court of Justice are not normally made publicly available, but this submission is;

* the position taken by the INTA differs from that of both Nokia (whose trade mark rights are in jeopardy in the underlying litigation that led to this reference) and HMRC.

If you've not seen the INTA's 48-page submission yet, you can view it on the INTA website here (thank you, Matthew Harris of Waterfront, for letting the Kat know it was there).

HMRC did not submit an independent submission in these proceedings, its position being articulated by in an overall submission by the United Kingdom government in support of its "hands-off-fakes-in-transit" position. The normal practice of the UK's Intellectual Property Office is to invite interested persons to give their opinions so that they can be taken into account by the government before it decides whether to make a submission and, once it has done so, what submission it should be making.

The IPKat wonders a little cheekily what those opinions were, and whether they were reflected in the UK government's submission -- the only people the Kat has heard from are people who are enraged, indignant or merely frustrated that an apparently correct interpretation of the current European law means that Heathrow airport can be conveniently used as a transit point for the world's counterfeits and that IP owners are powerless to stop them.

Merpel believes that the INTA will also have taken some steps to ascertain the wishes of its members before making its submission. Could it be that the INTA's submission more closely represents the views expressed to it than does the submission of the UK government?

Tufty, who does not often intervene in trade mark matters, chips in too. Surely, he says, the duty of the UK government is to emphasise that the actions of one of its departments have been carried out in accordance with the law as it stands. The function of the reference to the Court of Justice is not to change the law, since that's the job of the EU's legislators, but rather to clarify what it is in the first place so that the legislators know what, if anything, needs to be changed.

British customs here and here

Full post as published by IPKat on August 24, 2010 (boomark / email).