The Court of Justice defines the scope of Regulation (EC) No 3295/94 on counterfeit and pirated goods
Polo/Lauren, which has its registered office in New York (United States of America), is the holder of several verbal and pictorial trade marks that are registered in Austria and are known throughout the world. Relying on the Community's 'anti-piracy' regulation, the Austrian customs authorities, acting on a request by Polo/Lauren, issued instructions to customs offices to suspend release or to detain counterfeit Polo T-shirts featuring the American company's trade marks. Accordingly, pursuant to a decision taken by the customs office in Arnoldstein, 633 Polo T-shirts were temporarily detained in a customs warehouse in Linz. The consignor of the goods, Dwidua, was a company having its registered office in Indonesia, while the consignee of the goods was Olympic - SC, a company with its registered office in Poland.
Polo/Lauren applied to the Landesgericht (Regional Court) Linz for an order prohibiting Dwidua from marketing those goods bearing its protected pictorial or verbal trade marks and authorising Polo/Lauren to destroy, at Dwidua's expense, the T-shirts which had been detained by the customs authorities.
The Oberster Gerichtshof (Austrian Supreme Court), to which the case was appealed at last instance, was unsure whether the Community regulation applies in the case where goods imported from a non-member country are temporarily detained by a customs office while they are in transit to another non-member country and where, moreover, the holder of the right has its registered office in a non-member country. In those circumstances the Oberster Gerichtshof decided to stay the proceedings and to refer a question to the Court of Justice of the European Communities.
In its reply, the Court has ruled that the 'anti-piracy' regulation is applicable. It finds that the regulation is expressly designed to apply to goods passing through Community territory from a non-member country destined for another non-member country. It does not matter whether the holder of the right or those entitled under him have their registered office in a Member State or outside the Community.
Nevertheless, in its examination of the validity of the regulation, the Court considers whether its legal basis is adequate to allow it to apply to situations which do not appear to have any direct connection with the internal market. It points out that the Community institutions are empowered, in accordance with the implementation of a common commercial policy, to introduce common rules for stopping counterfeit goods under a suspensive customs procedure such as the external transit procedure. The Court also notes that the external transit of non-Community goods is not completely devoid of effect on the internal market. Admittedly, goods placed under this procedure are subject neither to the corresponding import duties nor to the other measures of commercial policy; it is as if they had not entered Community territory. In reality, however, they are imported from a non-member country and pass through one or more Member States before being exported to another non-member country. This operation is all the more liable to have a direct effect on the internal market as there is a risk that counterfeit goods placed under the external transit procedure may be fraudulently brought on to the Community market, as several Governments have pointed out.
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